Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 1 of 11 PageID #: 2398
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`C.A. No. 6:12-cv-799-LED
`
`PATENT CASE
`
`
`INVENSYS SYSTEMS, INC.,
`§
`§
`
`
`§
`
`Plaintiff,
`§
`v.
`
`§
`
`
`§
`EMERSON ELECTRIC CO. and
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Defendants,
`§
`and
`
`§
`
`
`§
`MICRO MOTION INC., USA,
`§
`
`
`§
`
`Counterclaim-Plaintiff,
`§
`v.
`
`§
`
`
`§
`INVENSYS SYSTEMS, INC.,
`§
`
`
`
`Counterclaim-Defendant. §
`
`THIRD AMENDED DOCKET CONTROL ORDER
`
`It is hereby ORDERED that the following schedule of deadlines is in effect until further
`
`order of this Court:
`
`AGREED DATES EVENT
`
`3 DAYS after
`conclusion of
`Trial
`
`Parties to File Motion to Seal Trial Exhibits, if they wish to seal any
`highly confidential exhibits.
`EXHIBITS: See order below regarding exhibits.
`
`10/13/15
`Court designated date –
`not flexible without good
`cause - Motion Required
`
`10/05/15
`Court designated date –
`not flexible without good
`cause - Motion Required
`
`9:00 a.m. JURY TRIAL as reached at the United States District
`Court, 211 W. Ferguson, 3rd Floor, Courtroom of Judge Leonard
`Davis, Tyler, Texas.
`
`9:00 a.m. JURY SELECTION at the United States District Court,
`211 W. Ferguson, 3rd Floor, Courtroom of Judge Leonard Davis,
`Tyler, Texas.
`
`
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 2 of 11 PageID #: 2399
`
`AGREED DATES EVENT
`
`09/24/15
`Court designated date –
`not flexible without good
`cause - Motion Required
`
`9:00 a.m. PRETRIAL CONFERENCE at the United States District
`Court, 211 W. Ferguson, 3rd Floor, Courtroom of Judge Leonard
`Davis, Tyler, Texas.
`All pending motions will be heard.
`
`09/22/15
`
`09/17/15
`
`09/14/15
`
`09/14/15
`
`09/04/15
`
`08/31/15
`
`08/21/15
`
`07/31/15
`
`Parties to file estimates of the amount of time they request at jury
`selection and trial for (1) voir dire, (2) opening statements, (3) direct and
`cross examinations, and (4) closing arguments.
`
`Responses to Motions in Limine due.
`
`Motions in Limine due. The parties are directed to confer and advise the
`Court on or before 3:00 o’clock p.m. the day before the pre-trial
`conference which paragraphs are agreed to and those that need to be
`addressed at the pre-trial conference.
`
`Pretrial Objections due.
`
`Objections to Rebuttal Deposition Testimony due.
`
`Rebuttal Designations and Objections to Deposition Testimony due.
`Cross examination line and page numbers to be included. In video
`depositions, each party is responsible for preparation of the final edited
`video in accordance with their parties’ designations and the Court’s
`rulings on objections.
`
`Pretrial Disclosures due.
`Video and Stenographic Deposition Designation due. Each party who
`proposes to offer deposition testimony shall file a disclosure identifying
`the line and page numbers to be offered.
`
`Joint Pretrial Order, Joint Proposed Jury Instructions with citation
`to authority and Form of the Verdict for jury trials due. Proposed
`Findings of Fact and Conclusions of Law with citation to authority for
`issues tried to the bench.
`Notice of Request for Daily Transcript or Real Time Reporting of
`Court Proceedings due. If a daily transcript or real time reporting of
`court proceedings is requested for trial or hearings, the party or parties
`making said request shall file a notice with the Court and email the Court
`Reporter, Shea Sloan, at shea_sloan@txed.uscourts.gov.
`
`
`
`
`
`2
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 3 of 11 PageID #: 2400
`
`AGREED DATES EVENT
`
`02/13/15
`
`01/16/15
`
`01/23/15
`
`12/19/14
`
`11/15/14
`
`10/17/14
`
`09/19/14
`
`08/08/14
`
`07/16/14
`
`05/23/14
`
`Response to Dispositive Motions (including Daubert motions) due.
`Responses to dispositive motions filed prior to the dispositive motion
`deadline, including Daubert motions, shall be due in accordance with
`Local Rule CV-56 and Local Rule CV-7. Motions to extend page limits
`will only be granted in exceptional circumstances.
`
`Dispositive Motions due from all parties and any other motions that
`may require a hearing (including Daubert motions) due. 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.
`
`Parties to Identify Rebuttal Trial Witnesses.
`
`Parties to Identify Trial Witnesses; Amend Pleadings (after Markman
`Hearing). It is not necessary to file a Motion for Leave to Amend before
`the deadline to amend pleadings. It is necessary to file a Motion for
`Leave to Amend after the deadline. However, except as provided in
`Patent Rule 3-6, if the amendment would effect infringement contentions
`or invalidity contentions, a motion must be made pursuant to Patent Rule
`3-6 irrespective of whether the amendment is made prior to this deadline.
`
`Deadline to File Letter Briefs for Summary Judgment Motions and
`Daubert Motions. See the Court’s website for further information.
`
`Expert Discovery Deadline.
`
`Parties designate rebuttal expert witnesses (non-construction issues),
`Rebuttal expert witness reports due. Refer to Local Rules for required
`information.
`
`Parties with burden of proof designate expert witnesses (non-construction
`issues). Expert witness reports due. Refer to Local Rules for required
`information.
`
`Fact Discovery Deadline.
`
`Comply with P.R. 3-7 – Furnishing documents and privilege logs
`pertaining to willful infringement.
`
`
`
`3
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 4 of 11 PageID #: 2401
`
`AGREED DATES EVENT
`
`14 days after
`service of Final
`Election of
`Asserted Claims
`
`Final Election of Asserted Prior Art. Not later than 14 days after
`service of a Final Election of Asserted Claims, each Party shall serve a
`Final Election of Asserted Prior Art, which shall identify no more than 6
`asserted prior art references per patent from among the 12 prior art
`references previously identified for that particular patent and no more
`than a total of 20 references against all asserted patents.
`
`28 days after the
`Court issues its
`Claim
`Construction
`Order
`
`Final Election of Asserted Claims. Not later than 28 days after the
`Court issues its Claim Construction Order, the Parties shall each serve a
`Final Election of Asserted Claims, which shall identify not more than 5
`asserted claims per patent from among the 10 previously identified claims
`from that particular patent and not more than a total of 16 claims from all
`asserted patents.
`
`05/01/14
`Court designated date –
`not flexible without good
`cause – Motion Required
`
`04/24/14
`
`Markman hearing and hearing on any Motion for Summary
`Judgment of Indefiniteness at 9:00 a.m. at the United States District
`Court, 3rd Floor, Courtroom of Judge Leonard Davis, Tyler, Texas.
`
`P.R. 4-5(d) Chart due. Parties shall jointly submit a claim construction
`chart on computer disk in WordPerfect format or in such other format as
`the Court may direct in accordance with P.R. 4-5(d).
`Reply to Motion for Summary Judgment of Indefiniteness due. The
`filing party is to provide the Court with 2 binders containing their brief
`and exhibits appropriately tabbed. If a technical advisor has been
`appointed the moving party is to provide their brief on disk or CD along
`with a hard copy, tabbed and bound in notebook format with exhibits to
`the advisor.
`Briefing shall comply with Local Rules CV-7 and 56 and Patent Rule 4-
`5(e). Pages shall be counted against the party’s total page limit. See
`Local Rules CV-7(a)(3). Motions to extend page limits will only be
`granted in exceptional circumstances.
`
`
`
`4
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 5 of 11 PageID #: 2402
`
`AGREED DATES EVENT
`
`04/18/14
`
`04/07/14
`
`Parties to file a notice with the Court stating the estimated amount of time
`requested for the Markman Hearing. The Court will notify the parties if it
`is unable to accommodate this request.
`Comply with P.R. 4-5(c) – Reply brief and supporting evidence due re
`response to claim construction. The filing party is to provide the Court
`with 2 binders containing their reply brief and exhibits appropriately
`tabbed. If a technical advisor has been appointed the moving party is to
`provide their brief on disk or CD along with a hard copy, tabbed and
`bound in notebook format with exhibits to the advisor.
`Response to Motion for Summary Judgment of Indefiniteness due.
`The filing party is to provide the Court with 2 binders containing their
`brief and exhibits appropriately tabbed. If a technical advisor has been
`appointed the moving party is to provide their brief on disk or CD along
`with a hard copy, tabbed and bound in notebook format with exhibits to
`the advisor.
`Briefing shall comply with Local Rules CV-7 and 56 and Patent Rule 4-
`5(e). Pages shall be counted against the party’s total page limit. See
`Local Rules CV-7(a)(3). Motions to extend page limits will only be
`granted in exceptional circumstances.
`
`Comply with P.R. 4-5(b) – Responsive brief and supporting evidence
`due to party claiming patent infringement. The filing party is to provide
`the Court with 2 binders containing their Markman brief and exhibits
`appropriately tabbed. If a technical advisor has been appointed the
`moving party is to provide their Markman brief on disk or CD along with
`a hard copy, tabbed and bound in notebook format with exhibits to the
`advisor.
`Motion for Summary Judgment of Indefiniteness due. The moving
`party is to provide the Court with 2 binders containing their brief and
`exhibits appropriately tabbed. If a technical advisor has been appointed
`the moving party is to provide their brief on disk or CD along with a hard
`copy, tabbed and bound in notebook format with exhibits to the advisor.
`Briefing shall comply with Local Rules CV-7 and 56 and Patent Rule 4-
`5(e). Pages shall be counted against the party’s total page limit. See
`Local Rules CV-7(a)(3). Motions to extend page limits will only be
`granted in exceptional circumstances.
`
`
`
`5
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 6 of 11 PageID #: 2403
`
`AGREED DATES EVENT
`
`Comply with P.R. 4-5(a) – The party claiming patent infringement shall
`serve and file an opening brief and any evidence supporting its claim
`construction. The filing party is to provide the Court with 2 binders
`containing their Markman brief and exhibits appropriately tabbed. If a
`technical advisor has been appointed the moving party is to provide their
`Markman brief on disk or CD along with a hard copy, tabbed and bound
`in notebook format with exhibits to the advisor.
`Briefing shall comply with Local Rules CV-7 and 56 and Patent Rule 4-
`5(e). Motions to extend page limits will only be granted in exceptional
`circumstances.
`
`Deadline to File Letter Brief for Motion for Summary Judgment of
`Indefiniteness. See the Court’s website for further information.
`
`Tutorials due. Deadline for parties, if they desire, to provide Court with
`tutorials concerning technology involved in patent. If a technical advisor
`has been appointed, each party that provides a tutorial shall provide a
`copy to the advisor.
`
`Deadline to provide specific listing of likely e-mail custodians that
`contains a specific identification of the fifteen most significant listed
`e-mail custodians.
`
`Respond to Amended Pleadings.
`
`Proposed Technical Advisors due. Parties to provide name, address,
`phone number, and curriculum vitae for up to three agreed technical
`advisors and information regarding the nominees’ availability for
`Markman hearing or a statement that they could not reach an agreement
`as to any potential technical advisor. If the parties cannot agree on a
`technical advisor, they shall not submit any proposed technical advisors to
`the Court.
`
`Discovery Deadline - Claim Construction Issues.
`
`Amend Pleadings (pre-claim construction) due from all parties. It is
`not necessary to file a Motion for Leave to Amend before the deadline to
`amend pleadings. It is necessary to file a Motion for Leave to Amend
`after
`the deadline.
` However,
`if
`the amendment would affect
`infringement contentions or invalidity contentions, a motion must be
`made pursuant to Patent Rule 3-7 irrespective of whether the amendment
`is made prior to this deadline.
`
`03/07/14
`
`03/07/14
`
`03/03/14
`
`02/28/14
`
`02/28/14
`
`02/21/14
`
`02/21/14
`
`02/14/14
`
`
`
`6
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 7 of 11 PageID #: 2404
`
`AGREED DATES EVENT
`
`01/24/14
`
`01/10/14
`
`12/07/13
`
`12/02/13
`
`10/18/13
`
`Comply with P.R. 4-3 – Filing of Joint Claim Construction and
`Prehearing Statement.
`
`Comply with P.R. 4-2 – Exchange of Preliminary Claim Constructions
`and Extrinsic Evidence.
`
`Privilege Logs to be exchanged by parties (or a letter to the Court stating
`that there are no disputes as to claims of privileged documents).
`
`Deadline for substantial completion of document production for fact
`discovery, except for P.R. 3-7 production.
`
`Comply with P.R. 4-1 – Exchange Proposed Terms and Claim Elements
`for Construction.
`
`14 days after
`service of the
`Preliminary
`Election of
`Asserted Claims
`
`Preliminary Election of Asserted Prior Art. Not later than 14 days
`after a Party serves its Preliminary Election of Asserted Claims, the
`opposing Party will serve its Preliminary Election of Asserted Prior Art.
`The opposing Party may elect not more than 12 prior art references
`against each patent and not more than a total of 40 prior art references
`against all asserted patents.
`
`12/03/13
`(81 days after
`completion of the
`P.R. 3-4
`production)
`
`Preliminary Election of Asserted Claims. Not later than 60 days after
`a Party completes its P.R. 3-4 production, including circuit diagrams and
`making the source code available, the opposing Party will serve its
`Preliminary Election of Asserted Claims. The opposing Party may elect
`not more than 10 claims per asserted patent and not more than a total of
`55 claims from all asserted patents.
`
`09/13/13
`
`Comply with P.R. 3-3 and P.R. 3-4 – Invalidity Contentions due.
`Thereafter, except as provided in Patent Rule 3-6(a), it is necessary to
`obtain leave of Court to add and/or amend invalidity contentions,
`pursuant to Patent Rule 3-6(b).
`Add any inequitable conduct allegations to pleadings. It is not
`necessary to file a motion for leave to add inequitable conduct allegations
`to pleadings prior to this date. Thereafter, it is necessary to obtain leave
`of Court to add inequitable conduct allegations to pleadings.
`
`
`
`7
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 8 of 11 PageID #: 2405
`
`AGREED DATES EVENT
`
`09/03/13
`
`08/12/13
`
`07/29/13
`
`07/15/13
`
`Defendant shall join additional parties. It is not necessary to file a
`motion to join additional parties prior to this date. Thereafter, it is
`necessary to obtain leave of Court to join additional parties.
`Defendant shall assert any counterclaims, excluding counterclaims
`for inequitable conduct. After this deadline, leave of Court must be
`obtained to assert any counterclaims.
`
`Deadline for initial document production, with rolling document
`productions to follow.
`
`Deadline to provide Initial Disclosures required by Paragraph 1 of
`the Discovery Order.
`
`Comply with P.R. 3-1 and P.R. 3-2 – Disclosure of Asserted Claims and
`Infringement Contentions due. Thereafter, except as provided in Patent
`Rule 3-6(a), it is necessary to obtain leave of Court to add and/or amend
`infringement contentions, pursuant to Patent Rule 3-6(b).
`Plaintiff shall join additional parties. It is not necessary to file a motion to
`join additional parties prior to this date. Thereafter, it is necessary to
`obtain leave of Court to join additional parties.
`Any new patents and/or claims for patents-in-suit shall be added. It is not
`necessary to file a motion to add additional patents or claims prior to this
`date. Thereafter, it is necessary to obtain leave of Court to add patents or
`claims. To the extent any new patents and/or claims for the patents-in-
`suit are added on or before this date, the parties shall adhere to the stated
`schedule.
`
`N/A
`
`Deadline to file Motion to Transfer Venue.1
`
`No later than 30
`days after a claim
`construction
`ruling is issued.
`
`Mediation to be completed. The parties will meet and confer and
`propose an agreed-upon mediator. To the extent the parties cannot agree,
`the Court will appoint a mediator. Mediation shall be conducted in
`accordance with the Court-Annexed Mediation Plan. See Appendix H to
`Local Rules, available the Court’s website at www.txed.uscourts.gov
`
`
`1 On January 10, 2013, Micro Motion, Inc. (“Micro Motion”) and Emerson Electric Co.
`(“Emerson”) moved to transfer this case to the District of Colorado. (Dkt. Nos. 14, 30.) The
`Motion to Transfer has been fully briefed. Micro Motion and Emerson also moved to stay this
`matter pending disposition of their Motion to Transfer. (Dkt. No. 36.) Micro Motion and
`Emerson provide dates solely to comply with the Court’s Order Setting Status Conference. (Dkt.
`No. 35.) By providing dates here, Micro Motion and Emerson do not concede in any way that
`this case should proceed, if at all, in this District.
`
`
`
`8
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 9 of 11 PageID #: 2406
`
`AGREED DATES EVENT
`
`No. of trial days EXPECTED LENGTH OF TRIAL – All parties request 14 trial days.
`
`In the event that any of these dates fall on a weekend or Court holiday, the deadline is
`modified to be the next Court business day.
`
`The parties are directed to Local Rule CV-7(d), which provides in part that “[i]n the event
`a party fails to oppose a motion in the manner prescribed herein the Court will assume that the
`party has no opposition.” Local Rule CV-7(e) provides that a party opposing a motion has 15
`days in which to serve and file supporting documents and briefs after which the Court will
`consider the submitted motion for decision.
`
`
`OTHER LIMITATIONS
`
`(a)
`
`(b)
`
`All depositions to be read into evidence as part of the parties’ case-in-chief shall
`be EDITED so as to exclude all unnecessary, repetitious, and irrelevant
`testimony; ONLY those portions which are relevant to the issues in controversy
`shall be read into evidence.
`The following excuses will not warrant a continuance nor justify a failure to
`comply with the discovery deadline:
`
`(i)
`
`(ii)
`
`(iii)
`
`The fact that there are motions for summary judgment or motions to
`dismiss pending;
`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;
`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.
`
`
`ORDER REGARDING EXHIBITS, EXHIBIT LISTS AND WITNESS LISTS:
`
`A.
`
`ON FIRST DAY OF TRIAL, each party is required to have on hand the
`following:
`
`(1)
`
`(2)
`
`One (1) copy of their respective original exhibits. Each exhibit
`shall be properly labeled with the following information: Identified
`as either Plaintiff’s or Defendant’s Exhibit, the Exhibit Number
`and the Case Number. In addition, exhibits shall be placed in
`properly marked manila folders and contained in a box with
`handles. (Do not tender to the Court until instructed).
`
`Three (3) hard copies of their exhibit list and witness list. These
`lists shall be tendered to the Courtroom Administrator at the
`beginning of trial.
`
`
`
`
`
`
`
`
`
`
`
`9
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 10 of 11 PageID #: 2407
`
`(3)
`
`One (1) copy of all exhibits on disk(s), USB Flash Drive(s), or
`portable hard drive(s). This shall be tendered to the Courtroom
`Administrator at the beginning of trial.
`
`EXHIBIT LISTS DURING TRIAL:
`
`(1)
`
`(2)
`
`
`
`
`
`(3)
`
`(4)
`
`(5)
`
`On the first day of trial, each party should be prepared to offer en
`masse, exhibits NOT objected to by opposing party and tender to
`the Court a list of said exhibits. Parties are directed to entitle the
`list, “Plaintiff’s / Defendant’s Exhibits Admitted on (DATE).” This
`list will be marked as Plaintiff’s / Defendant’s Exhibit List 1.
`
`On the second day of trial and daily thereafter, parties shall offer
`any additional exhibits not objected to by opposing party and
`tender to the Court a list of said exhibits. This list should be
`entitled “Plaintiff’s / Defendant’s Exhibits Admitted on (DATE),”
`and will be marked as Plaintiff’s / Defendant’s Exhibit List 2, and
`so on until the conclusion of trial.
`
`On the last day of trial, the parties shall tender to the Court three
`(3) copies of a cumulative list entitled, “Plaintiff’s / Defendant’s
`Final List of All Admitted Exhibits.”
`
`ALL ADMITTED EXHIBITS WILL BECOME PART OF THE
`RECORD AND WILL GO TO THE JURY.
`
`The Court urges the parties to meet and confer on a daily basis
`during trial regarding admission of exhibits, so as not to delay the
`trial proceedings.
`
`At the conclusion of the evidentiary phase of trial, each party is to gather
`only those exhibits admitted during trial and tender those to the Courtroom
`Administrator, along with a copy of their final list of exhibits including the
`description of exhibits for the Jury’s use. The Courtroom Administrator
`shall verify the exhibits and final lists and tender to the jury for their
`deliberations.
`
`At the conclusion of trial, all boxes of exhibits shall be returned to the
`respective parties and the parties are instructed to remove these exhibits
`from the courtroom.
`
`SEALED EXHIBITS: Within three (3) days of the conclusion of trial,
`parties are to file a Motion to Seal Trial Exhibits, if they have highly
`confidential exhibits.
`
`B.
`
`
`C.
`
`
`D.
`
`
`E.
`
`
`
`
`
`
`
`
`
`
`
`10
`
`

`
`Case 6:12-cv-00799-JRG Document 85 Filed 11/13/13 Page 11 of 11 PageID #: 2408
`
`F.
`
`SUBMISSION OF FINAL LISTS AND EXHIBITS: Within seven (7)
`business days of the conclusion of trial, each party shall submit to the
`Court (to Chambers):
`
`(1)
`
`(2)
`
`A hard copy of Final Exhibit List of Exhibits Admitted During
`Trial, listing only the exhibits admitted at trial and making a
`notation of any sealed exhibit. In addition parties shall provide the
`Court a disk containing this document in WordPerfect or Word
`format. For Example: Plaintiff will tender a list entitled,
`“Plaintiff’s Final Exhibit List of Exhibits Admitted During Trial.”
`
`Two (2) separate copies of all sealed trial exhibits in PDF format
`on disk(s) or thumb drive(s); and, two separate copies of all other
`trial exhibits in PDF format on disk(s) or thumb drive(s). If
`tangible or over-sized exhibits were admitted, such exhibits shall
`be substituted with a photograph to be converted to a PDF file and
`shall be included in the Court’s disk(s) of admitted exhibits.
`
`
`
`(3)
`
`Two (2) separate copies of transcripts of Video Depositions played
`during trial, along with a copy of the actual video deposition on
`disk(s) or thumb drive(s).
`
`G.
`
`H.
`
`FILING AND STORAGE OF EXHIBITS: After receipt of final exhibit
`lists and exhibits, the Courtroom Administrator shall file and docket the
`parties’ respective lists, and the trial exhibits shall be stored in the Clerk’s
`Office, Tyler Division. Sealed Exhibits will be stored in the Clerk’s
`Office Vault.
`
` All questions regarding
`QUESTIONS REGARDING EXHIBITS:
`exhibits, lists, and procedures shall be directed to Rosa Ferguson, Court
`Administrator via email: rosa_ferguson@txed.uscourts.gov.
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`__________________________________
`LEONARD DAVIS
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 13th day of November, 2013.