Case 1:20-cv-00822-ADA Document 59 Filed 02/01/21 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`Civil Action No. 1:20-cv-822-ADA
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`JURY TRIAL DEMANDED
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`RAVGEN, INC.,
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` Plaintiff,
`v.
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`PERKINELMER, INC.,
`PERKINELMER GENETICS, INC.,
`BIOO SCIENTIFIC CORPORATION,
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` Defendants.
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`UPDATED ORDER GOVERNING PROCEEDINGS – PATENT CASE
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`This Updated Order shall govern proceedings in this case.
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`DISCOVERY
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`Except with regard to venue, jurisdictional, and claim construction-related discovery, all other
`discovery is stayed until after the Markman hearing. Notwithstanding this general stay of
`discovery, the Court will permit limited discovery by agreement of the parties, or upon request,
`where exceptional circumstances warrant. For example, if discovery outside the United States is
`contemplated, the Court will be inclined to allow such discovery to commence before the
`Markman hearing.
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`With respect to venue and jurisdictional discovery, the Court generally grants leave for the
`parties to conduct targeted discovery. The Court’s default venue/jurisdiction discovery limits are
`as follows:
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`1. Interrogatories: 5 per party
`2. Requests for Production: 5 per party
`3. Fact depositions: 4 hours for a 30(b)(6) witness per party
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`To the extent a party provides multiple declarations in support or against a motion to transfer
`venue or a motion to dismiss based on lack of jurisdiction, the Court will allow the other side to
`have additional interrogatories (e.g., 2 more), RFPs (e.g., 2 more), and deposition time (e.g., 2
`more hours). To the extent the parties cannot agree what the additional number of
`interrogatories, RFPs, and deposition time should be, the Court encourages the parties to contact
`the Court to request a telephonic discovery hearing.
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`Following the Markman hearing, the following discovery limits will apply to this case. The
`Court will consider reasonable requests to adjust these limits should circumstances warrant.
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`EXHIBIT B
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`Case 1:20-cv-00822-ADA Document 59 Filed 02/01/21 Page 2 of 6
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`1. Interrogatories: 30 per side1
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`2. Requests for Admission: 45 per side; The parties are allowed unlimited requests seeking
`an admission as to the authenticity of a particular document or thing.
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`3. Requests for Production: 75 per side
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`4. Fact Depositions: 70 hours per side (for both party and non-party witnesses combined).
`Upon a showing of good cause, a party may request additional hours for fact depositions.
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`5. Expert Depositions: 7 hours per report up to a maximum of 12 hours total deposition
`time, limited to no more than 7 hours in one day. Upon a showing of good cause, a party
`may request additional hours for a specific expert’s deposition.
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`Electronically Stored Information. As a preliminary matter, the Court will not require general
`search and production of email or other electronically stored information (ESI), absent a showing
`of good cause. If a party believes targeted email/ESI discovery is necessary, it shall propose a
`procedure identifying custodians and search terms it believes the opposing party should search.
`The opposing party can oppose, or propose an alternate plan. If the parties cannot agree, they
`shall contact chambers to schedule a call with the Court to discuss their respective positions.
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`DISCOVERY DISPUTES
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`A party may not file a Motion to Compel discovery unless: (1) lead counsel have met and
`conferred in good faith to try to resolve the dispute, and (2) the party has contacted the Court’s
`law clerk (with opposing counsel) to arrange a telephone conference with the Court to
`summarize the dispute and the parties respective positions. Summaries shall be neutral and non-
`argumentative. After hearing from the parties, the Court will determine if further briefing is
`required.
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`PROTECTIVE ORDER
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`Pending entry of the final Protective Order, the Court issues the following interim Protective
`Order to govern the disclosure of confidential information in this matter:
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`If any document or information produced in this matter is deemed confidential by the
`producing party and if the Court has not entered a protective order, until a protective
`order is issued by the Court, the document shall be marked “confidential” or with some
`other confidential designation (such as “Confidential – Outside Attorneys Eyes Only”) by
`the disclosing party and disclosure of the confidential document or information shall be
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`1 A “side” shall mean the plaintiff (or related plaintiffs suing together) on the one hand, and the
`defendant (or related defendants sued together) on the other hand. In the event that the Court
`consolidates related cases for pretrial purposes, with regard to calculating limits imposed by this
`Order, a “side” shall be interpreted as if the cases were proceeding individually. For example, in
`consolidated cases the plaintiff may serve up to 30 interrogatories on each defendant, and each
`defendant may serve up to 30 interrogatories on the plaintiff.
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`2
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`Case 1:20-cv-00822-ADA Document 59 Filed 02/01/21 Page 3 of 6
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`limited to each party’s outside attorney(s) of record and the employees of such outside
`attorney(s).
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`If a party is not represented by an outside attorney, disclosure of the confidential
`document or information shall be limited to one designated “in house” attorney, whose
`identity and job functions shall be disclosed to the producing party 5 days prior to any
`such disclosure, in order to permit any motion for protective order or other relief
`regarding such disclosure. The person(s) to whom disclosure of a confidential document
`or information is made under this local rule shall keep it confidential and use it only for
`purposes of litigating the case.
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`CLAIM CONSTRUCTION ISSUES
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`Terms for Construction. Based on the Court’s experience, the Court believes that it should
`have presumed limits on the number of claim terms to be construed. The “presumed limit” is the
`maximum number of terms that each side may request the Court to construe without further
`leave of Court. If the Court grants leave for the additional terms to be construed, depending on
`the complexity and number of terms, the Court may split the Markman hearing into multiple
`hearings.
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`The presumed limits based on the number of patents-in-suit are as follows:
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`Limits for Number of Claim Terms to be Construed
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`1-2 Patents
`8 terms
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`3-5 Patents
`10 terms
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`More than 5 Patents
`12 terms
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`When the parties submit their joint claim construction statement, in addition to the term and the
`parties’ proposed constructions, the parties should indicate which party or side proposed that
`term, or if that was a joint proposal.
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`Claim Construction Briefing. The Court will require non-simultaneous claim construction
`briefing with the following default page limits; however, where exceptional circumstances
`warrant, the Court will consider reasonable requests to adjust these limits. These page limits
`shall also apply collectively for consolidated cases; however, the Court will consider reasonable
`requests to adjust page limits in consolidated cases where circumstances warrant. In addition,
`the Court is very familiar with the law of claim construction and encourages the parties to forego
`lengthy recitations of the underlying legal authorities and instead focus on the substantive issues
`unique to each case.
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`Unless otherwise agreed by the parties, all filings will take place at 5:00 p.m. CT.
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`Unless otherwise agreed to by the parties, the default order of terms in the parties’ briefs shall be
`based on 1) the patent number (lowest to highest), the claim number (lowest to highest), and
`order of appearance within the lowest number patent and claim. An example order may be as
`follows:
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`1. 10,000,000 Patent, Claim 1, Term 1
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`3
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`Case 1:20-cv-00822-ADA Document 59 Filed 02/01/21 Page 4 of 6
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`2. 10,000,000 Patent, Claim 1, Term 2 (where Term 2 appears later in the claim than does
`Term 1)
`3. 10,000,000 Patent, Claim 2, Term 3 (where Term 3 appears later in the claim than does
`Terms 2 and 3)
`4. 10,000,001 Patent, Claim 1, Term 4
`5. 10,000,001 Patent, Claim 3, Term 5
`6. 10,000,002 Patent, Claim 2, Term 6
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`To the extent that the same or similar terms appear in multiple claims, those same or similar
`terms should be ordered according to the lowest patent number, lowest claim number, and order
`of appearance within the patent and claim.
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`Page Limits for Markman Briefs
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`Brief
`Opening (Plaintiff)
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`1-2 Patents
`20 pages
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`3-5 Patents
`30 pages
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`Response
`(Defendant)
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`20 pages
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`30 pages
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`Reply (Plaintiff)
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`10 pages
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`15 pages
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`Sur-Reply
`(Defendant)
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`10 pages
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`15 pages
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`More than 5 Patents
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`30 pages, plus 5
`additional pages for
`each patent over 5 up
`to a maximum of 45
`pages
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
`15 pages, plus 2
`additional pages for
`each patent over 5 up
`to a maximum of 21
`pages
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`Technology Tutorials and Conduct of the Markman Hearing
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`Technology tutorials are optional. If the parties would like to submit one, the tutorial should be
`in electronic form, with voiceovers, and submitted at least one week before the Markman
`hearing. If a party believes a live tutorial would be of particular benefit to the Court, the parties
`should contact the Court to request a Zoom or telephonic tutorial so that the tutorial can be
`scheduled to occur at least a week before the Markman hearing. In general, tutorials should be:
`(1) directed to the underlying technology (rather than argument related to infringement or
`validity), and (2) limited to 15 minutes per side. For the Court’s convenience, the tutorial may
`be recorded, but will not be part of the record. Parties may not rely on or cite to the tutorial in
`other aspects of the litigation.
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`The Court generally sets aside one half day for the Markman hearing; however, the Court is open
`to reserving more or less time, depending on the complexity of the case and input from the
`parties. As a general rule, the party opposing the Court’s preliminary construction shall go first.
`If both parties are unwilling to accept the Court’s preliminary construction, the Plaintiff shall
`typically go first.
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`GENERAL ISSUES
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`1. The Court will entertain reasonable requests to streamline the case schedule and discovery
`and encourages the parties to contact the Court’s law clerk (with opposing counsel) to
`arrange a call with the Court when such interaction might help streamline the case.
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`2. To the extent the parties need to email the Court, the parties should use the following email
`address: TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov.
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`3. The Court is generally willing to extend the response to the Complaint up to 45 days if
`agreed by the parties. However, longer extensions are disfavored and will require good
`cause.
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`4. Plaintiff must file a notice informing the Court when an IPR is filed, the expected time for an
`institution decision, and the expected time for a final written decision, within two weeks of
`the filing of the IPR.
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`5. After the trial date is set, the Court will not move the trial date except in extreme situations.
`To the extent a party believes that the circumstances warrant continuing the trial date, the
`parties are directed to contact the Court to request a telephonic hearing.
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`6. The Court does not have a limit on the number of motions for summary judgment (MSJs);
`however, absent leave of Court, the cumulative page limit for Opening Briefs for all MSJs is
`40 pages per side.
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`7. There may be instances where the submission of substantive briefs via audio file will be of
`help to the Court. If a party is contemplating submitting a brief via audio file it should
`contact the Court for guidance on whether it would be helpful to the Court. However, the
`Court has determined that audio recordings of Markman briefs are of limited value and those
`need not be submitted. The recordings shall be made in a neutral fashion, shall be verbatim
`transcriptions without additional colloquy (except that citations and legal authority sections
`need not be included), and each such file shall be served on opposing counsel. The Court
`does not have a preference for the manner of recording and has found automated software
`recordings, as well as attorney recordings, to be more than satisfactory. Audio files shall be
`submitted via USB drive, Box (not another cloud storage)2, or email to the law clerk (with a
`cc to opposing counsel) and should be submitted in mp3 format.
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`8. For Markman briefs, summary judgment motions, and Daubert motions, each party shall
`deliver to Chambers one (1) paper copy of its Opening, Response, and Reply briefs, omitting
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`2 The parties should contact the law clerk to request a Box link so that the party can directly upload the files to the
`Court’s Box account.
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`attachments, at least a week before the hearing. Each party shall also provide an electronic
`copy of the briefs and exhibits via cloud storage3 or USB drive. For Markman briefs, the
`parties should also include a (1) paper copy of all patents-in-suit and the Joint Claim
`Construction Statement. To the extent the Court appoints a technical adviser, each party shall
`deliver the same to the technical adviser.
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` February
`1st
`ORDERED this ___ day of _________, 2021.
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`______________________________
`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`3 The parties should contact the law clerk to request a Box link so that the party can directly
`upload the files to the Court’s Box account. The filenames for any exhibits should be a
`description of the exhibit, e.g., “U.S. Patent No. 10,000,000” or “Prosecution history for
`10,000,000 (January 20, 2020, Office Action).”
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