Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 1 of 29
`
`THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IOENGINE, LLC,
`Plaintiff/Counterclaim
`
`Defendant,
`
`v.
`
`ROKU, INC.,
`Defendant/Counterclaim
`
`Plaintiff.
`
`C.A. No. 6:21-cv-01296-ADA-DTG
`
`JURY TRIAL DEMANDED
`
`JOINT PRETRIAL ORDER
`
`1
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 2 of 29
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`
`V.
`
`VI.
`VII.
`
`VIII.
`IX.
`X.
`XI.
`XII.
`XIII.
`XIV.
`XV.
`XVI.
`XVII.
`
`A.
`B.
`
`A.
`B.
`
`A.
`B.
`C.
`D.
`E.
`F.
`G.
`H.
`I.
`J.
`
`APPEARANCE OF COUNSEL ................................................................................. 4
`STATEMENT OF JURISDICTION........................................................................... 5
`JOINT STATEMENT OF THE CASE....................................................................... 6
`CONTENTIONS OF THE PARTIES ........................................................................ 7
`IOENGINE’s Contentions ..................................................................................... 7
`Roku’s Contentions ............................................................................................. 10
`STIPULATED FACTS ............................................................................................. 12
`The Parties ........................................................................................................... 12
`The Asserted Patents ........................................................................................... 13
`DISPUTED ISSUES OF LAW ................................................................................. 14
`TRIAL CONDUCT, DISCLOSURES, AND STIPULATIONS .............................. 15
`Motions ................................................................................................................ 15
`Exhibits ................................................................................................................ 15
`Witnesses ............................................................................................................. 17
`Deposition Testimony ......................................................................................... 18
`Demonstrative Exhibits ....................................................................................... 20
`Disclosures for Opening Statements ................................................................... 21
`Stipulations Regarding Subject Matter Not to Be Presented to the Jury ............. 21
`Handling of Source Code and Confidential Material .......................................... 22
`Agreed Juror Notebooks ...................................................................................... 22
`Number of Jurors ................................................................................................. 23
`LIST OF PENDING MOTIONS .............................................................................. 23
`VERDICT FORM ..................................................................................................... 24
`LENGTH OF TRIAL ................................................................................................ 25
`ATTACHMENT – EXHIBITS ................................................................................. 25
`ATTACHMENT – WITNESS LISTS ...................................................................... 25
`ATTACHMENT – DEPOSITION DESIGNATIONS ............................................. 25
`ATTACHMENT – DISCOVERY DESIGNATIONS .............................................. 25
`ATTACHMENT - DISPUTED MOTIONS IN LIMINE .......................................... 26
`ATTACHMENT – JURY INSTRUCTIONS ........................................................... 26
`ATTACHMENT- VOIR DIRE................................................................................. 26
`
`2
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 3 of 29
`
`INDEX OF EXHIBITS
`
`NUMBER
`1
`2
`3A
`3B
`4A
`4B
`5A
`5B
`6A
`6B
`7A
`7B
`8
`9
`10
`
`EXHIBIT
`
`Joint Proposed Verdict Form
`Joint Exhibit List
`IOENGINE’s Exhibit List
`Roku’s Exhibit List
`IOENGINE’s Witness List
`Roku’s Witness List
`IOENGINE’s Deposition Designations
`Roku’s Deposition Designations
`IOENGINE’s Discovery Designations
`Roku’s Discovery Designations
`IOENGINE’s Motions in Limine
`Roku’s Motions in Limine
`Joint and Disputed Proposed Preliminary Jury Instructions
`Joint and Disputed Proposed Final Jury Instructions
`Joint Proposed Voir Dire and Jury Questionnaire
`
`3
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 4 of 29
`
`In advance of the September 19, 2023 Pretrial Conference, Plaintiff IOENGINE, LLC
`
`(“IOENGINE”) and Defendant Roku, Inc. (“Roku”) submit the following proposed Joint Pretrial
`
`Order pursuant to the Court’s Agreed Scheduling Order (Sept. 6, 2022 order granting Dkt. 26), the
`
`Court’s Order Setting Pretrial Conference (Dkt. 279), the Court’s Amended Standing Order on
`
`Pretrial Procedures and Requirements in Civil Cases, the Federal Rules of Civil Procedures, and
`
`the Local Rules of this Court. The parties have stipulated to various matters identified herein and
`
`have identified exhibits, witnesses, factual contentions and triable issues.
`
`I.
`
`APPEARANCE OF COUNSEL
`
`Counsel for IOENGINE
`
`Counsel for Roku
`
`Noah M. Leibowitz (pro hac vice)
`NYSBA: 3034980
`Gregory T. Chuebon (pro hac vice)
`NYSBA: 4589057
`Dechert LLP
`1095 Avenue of the Americas
`New York, NY 10036
`(212) 698-3500
`(212) 698-3599 (fax)
`noah.leibowitz@dechert.com
`greg.chuebon@dechert.com
`
`Jeffrey B. Plies
`SBOTX : 24027621
`Dechert LLP
`515 Congress Avenue, Suite 1400
`Austin, TX 78701
`(512) 394-3000
`(512) 394-3001 (fax)
`jeff.plies@dechert.com
`
`Derek J. Brader (pro hac vice)
`PBA: 312513
`Luke Reilly (pro hac vice)
`PBA: 324792
`Judah Bellin (pro hac vice)
`PBA: 325907
`DECHERT LLP
`
`4
`
`David N. Deaconson
`Texas Bar No.: 05673400
`PAKIS, GIOTES, PAGE &
`BURLESON, P.C.
`400 Austin Avenue
`Waco, TX 76701
`(254) 297-7300
`deaconson@pakislaw.com
`
`Tia D. Fenton (pro hac vice)
`Christopher Ricciuti (pro hac vice)
`Elissa L. Sanford (pro hac vice)
`Alec M. Royka (pro hac vice)
`DUANE MORRIS LLP
`901 New York Avenue, N.W.
`Suite 700-East
`Washington, D.C. 20001
`T: 202-776-7800
`TDFenton@duanemorris.com
`CRicciuti@duanemorris.com
`ARoyka@duanemorris.com
`ESanford@duanemorris.com
`
`Matthew C. Gaudet (pro hac vice)
`Mcgaudet@duanemorris.com
`DUANE MORRIS LLP
`1075 Peachtree Street NE, Suite 1700
`Atlanta, GA 30309
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 5 of 29
`
`Counsel for Roku
`
`(404) 253-6900
`(404) 253-6901 (fax)
`
`Holly Elin Engelmann
`Texas Bar No.: 24040865
`DUANE MORRIS LLP
`Las Cimas IV
`900 S. Capital of Texas Hwy, Suite 300
`Austin, TX 78746
`(214) 257-7226
`(214) 292-9454 (fax)
`hengelmann@duanemorris.com
`
`Counsel for IOENGINE
`
`Cira Center
`2929 Arch Street
`Philadelphia, PA 19104
`(215) 994-4000
`(214) 994-2222 (fax)
`derek.brader@dechert.com
`
`Michael H. Joshi (pro hac vice)
`SBCA: 302184
`Christopher M. Denney (pro hac vice)
`SBCA: 336378
`DECHERT LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 650
`Palo Alto, CA 94306
`(650) 813-4800
`(650) 813-4848 (fax)
`michael.joshi@dechert.com
`
`Melissa R. Smith
`SBOTX: 24001351
`Gillam and Smith, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`(903)934-8450
`(903)934-9257 (fax)
`melissa@gillamsmithlaw.com
`
`James Travis Underwood
`SBOTX: 24102587
`Gillam & Smith
`102 N. College, Suite 800
`Tyler, TX 75702
`(903) 934-8450
`(903) 934-9257 (fax)
`travis@gillamsmithlaw.com
`
`II.
`
`STATEMENT OF JURISDICTION
`
`Subject matter jurisdiction is proper in this Court pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a). Personal jurisdiction is not disputed for purposes of this action. Venue under 28 U.S.C.
`
`5
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 6 of 29
`
`§§ 1391(c) and 1400(b) has been previously disputed and held to be appropriate for purposes of
`
`this action. See Dkt. Nos. 73, 84, 106, 147.
`
`III.
`
`JOINT STATEMENT OF THE CASE
`
`This is an action for patent infringement of U.S. Patent Nos. 10,447,819 (the “’819 Patent”)
`
`and 10,972,584 (the “’584 Patent,” and, together with the ’819 Patent, the “Asserted Patents”).
`
`For purposes of trial, IOENGINE accuses Roku of infringing Claims 187 and 192 of
`
`the ’819 Patent and Claims 10, 11, 18, 20, 26, 27, 29, 48, 60, and 61 of the ’584 Patent (collectively
`
`the “Asserted Claims”). IOENGINE accuses Roku of direct, joint, and indirect infringement of the
`
`Asserted Claims. IOENGINE contends that Roku infringes both literally and under the doctrine
`
`of equivalents. IOENGINE contends that Roku’s infringement was and continues to be willful.
`
`IOENGINE seeks monetary damages in the form of a reasonable royalty, pre-and post-judgment
`
`interest, costs, enhanced damages, and an award of its fees under 35 U.S.C. §§ 284 and 285.
`
`Roku denies that it has directly, jointly, or indirectly infringed or is infringing any of the
`
`Asserted Claims of the Asserted Patents either literally or under the doctrine of equivalents. Roku
`
`further contends that the Asserted Claims are invalid as anticipated and/or are obvious in light of
`
`the prior art under 35 U.S.C. §§ 102 and 103 and for lacking written description support and
`
`enablement under 35 U.S.C. § 112, as well as failing to recite patentable subject matter under 35
`
`U.S.C. § 101. Roku also contends that the Asserted Claims are unenforceable due to inequitable
`
`conduct. Roku additionally contends that IOENGINE is not entitled to a priority date any earlier
`
`than March 23, 2004. Roku also denies that IOENGINE is entitled to any monetary damages,
`
`including in the form of an ongoing reasonable royalty, to any pre- and post-judgment interest, to
`
`any costs, or to any award of its fees under 35 U.S.C. §§ 284 and 285 or any other relief. Roku
`
`further denies that any infringement, should the jury find it occurred, was willful, and denies that
`
`IOENGINE is entitled to any enhanced damages under 35 U.S.C. § 284. Roku also denies that
`
`6
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 7 of 29
`
`IOENGINE is entitled to a permanent injunction under 35 U.S.C. § 284. Roku additionally denies
`
`each allegation and claim asserted by IOENGINE.
`
`IOENGINE denies that any Asserted Claim is invalid or unenforceable for any reason.
`
`IOENGINE additionally denies each allegation and contention asserted by Roku.
`
`IV.
`
`CONTENTIONS OF THE PARTIES
`
`A.
`
`IOENGINE’s Contentions
`
`IOENGINE provides the following statement of contentions without waiver of any claim,
`
`response given during discovery, or any opinion expressed by IOENGINE’s experts. By providing
`
`these contentions, IOENGINE does not concede that any of the following issues concerning
`
`Roku’s defenses or contentions are appropriately presented at trial. In particular, IOENGINE does
`
`not waive any issues raised in its pending, decided, or future motions, including any motions in
`
`limine, motions for summary judgment, Daubert motions, motions to strike, and any other future
`
`motions or objections that it may file. IOENGINE’s contentions in this case are detailed in part in
`
`IOENGINE’s pending motions (see Section VIII below), IOENGINE’s infringement contentions,
`
`and IOENGINE’s expert reports, which are all incorporated by reference herein.
`
`1.
`
`IOENGINE contends it is the true and correct owner of the Asserted Patents and
`
`holds all rights necessary to bring this action in its own name and recover damages from all past,
`
`present, and future infringement of the Asserted Patents.
`
`2.
`
`IOENGINE contends that Scott McNulty is the true, sole, and correct inventor of
`
`the Asserted Patents.
`
`3.
`
`IOENGINE contends that the Asserted Claims are entitled to a priority date as early
`
`as June 26, 2001 and no later than March 23, 2004, the date on which Application No. 10/807,731
`
`was filed.
`
`7
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 8 of 29
`
`4.
`
`IOENGINE contends that Roku and/or its customers make, use, sell, offer for sale,
`
`and/or import products, methods, or systems that directly and indirectly infringe the Asserted
`
`Claims. Roku’s suite of infringing streaming media player products include: Roku Express, Roku
`
`Express+, Roku Express 4K, Roku Express 4K+, Roku Premiere, Roku Premiere+, Roku
`
`Streaming Stick, Roku Streaming Stick 4K, Roku Streaming Stick 4K+, Roku Streaming Stick+,
`
`Roku Streaming Stick+ Headphone Edition, Roku Ultra, Roku Ultra LT, Roku SE, and Roku LE
`
`(collectively, the “Accused Products”).
`
`5.
`
`IOENGINE contends that Roku directly infringes (literally or under the doctrine of
`
`equivalents) each Asserted Claim.
`
`6.
`
`IOENGINE contends that Roku and its customers jointly infringe (literally or under
`
`the doctrine of equivalents) each Asserted Method Claim (Claims 48, 60, and 61 of the ’584
`
`Patent).
`
`7.
`
`IOENGINE contends that Roku induces the infringement (literally or under the
`
`doctrine of equivalents) of each Asserted Claim.
`
`8.
`
`IOENGINE contends that Roku contributes to the infringement (literally or under
`
`the doctrine of equivalents) of each Asserted Claim.
`
`9.
`
`IOENGINE contends that Roku’s infringement has been and continues to be willful
`
`at least since the filing of the current action.
`
`10.
`
`11.
`
`IOENGINE contends that the Asserted Claims are valid and enforceable.
`
`IOENGINE contends that the Asserted Claims are not invalid for any reason,
`
`including under 35 U.S.C. §§ 101, 102, 103, or 112.
`
`12.
`
`IOENGINE contends that the claims of the Asserted Patents are not unenforceable
`
`for any reason.
`
`8
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 9 of 29
`
`13.
`
`IOENGINE contends that Roku had actual or constructive knowledge of the
`
`existence of and its infringement of each of the Asserted Patents, whether directly or through
`
`willful blindness, at least as early as the filing of the current action.
`
`14.
`
`IOENGINE contends that Roku intends that its customers and personnel take
`
`actions that constitute infringement of the Asserted Claims.
`
`15.
`
`IOENGINE contends that it has suffered damages in an amount to be determined
`
`at trial that is not less than a reasonable royalty adequate to compensate it for Roku’s infringement
`
`of the Asserted Patents as a direct and proximate cause of Roku’s infringement and is entitled to
`
`an award of damages adequate to compensate it for Roku’s infringement.
`
`16.
`
`IOENGINE contends that it is entitled to entry of a permanent injunction enjoining
`
`Roku and its affiliated entities, officers, agents, servants, employees, and those persons in active
`
`concert or participation with them who receive actual notice thereof, from directly or indirectly
`
`infringing, inducing the infringement of, or contributing to the infringement of each of the Asserted
`
`Patents.
`
`17.
`
`IOENGINE contends that it is entitled to an award of compensatory damages
`
`arising out of Roku’s infringement, including damages for any continuing post-verdict
`
`infringement up until entry of the final judgment and increased damages for Roku’s willful
`
`infringement, together with pre-judgment and post-judgment interest thereon.
`
`18.
`
`IOENGINE contends that it is entitled to an award its of costs, interest, and
`
`reasonable attorneys’ fees.
`
`19.
`
`IOENGINE contends that it is entitled to an accounting for future sales and an
`
`award of compensatory damages arising out of Roku’s ongoing infringement and increased
`
`damages for Roku’s ongoing willful infringement.
`
`9
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 10 of 29
`
`20.
`
`To the extent not already addressed above, IOENGINE disagrees with Roku’s
`
`contentions below.
`
`B.
`
`Roku’s Contentions
`
`By providing these contentions, Roku does not concede that any of the following issues
`
`are appropriately presented at trial. In particular, Roku does not waive any issues raised in their
`
`pending, decided, or future motions, including any motions in limine, motions for summary
`
`judgment, Daubert motions, motions to strike, and any other future motions or objections that they
`
`may file. Roku’s contentions in this case are detailed in part in Roku’s pending motions (see
`
`Section VIII below), Roku’s invalidity contentions, and Roku’s expert reports, which are all
`
`incorporated by reference herein. In sum, Roku contends the following:
`
`1.
`
`Roku objects to IOENGINE’s description of its infringement allegations and
`
`disagrees that the infringement allegations are consistent with IOENGINE’s allegations disclosed
`
`in its infringement contentions and during discovery in this case.
`
`2.
`
`Roku does not directly infringe any Asserted Claim of any of the Asserted Patents
`
`either literally or under the doctrine of equivalents.
`
`3.
`
`Roku and its customers do not jointly infringe any Asserted Claim of any of the
`
`Asserted Patents, either literally or under the doctrine of equivalents.
`
`4.
`
`Roku does not induce infringement of any Asserted Claim of any of the Asserted
`
`Patents, either literally or under the doctrine of equivalents.
`
`5.
`
`Roku does not contribute to the infringement of any Asserted Claim of any of the
`
`Asserted Patents, either literally or under the doctrine of equivalents.
`
`6.
`
`Roku denies that any infringement, should the jury find it occurred, was willful.
`
`10
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 11 of 29
`
`7.
`
`Roku has moved to strike IOENGINE’s assertion of infringement under the
`
`doctrine of equivalents.
`
`8.
`
`Roku contends that should there be any date of invention at all, that date is March
`
`23, 2004, the date on which Mr. McNulty filed his first patent application.
`
`9.
`
`The Asserted Claims are directed to patent-ineligible subject matter under 35
`
`U.S.C. §101 and are therefore invalid.
`
`10.
`
`The Asserted Claims are invalid for lack of enablement and written description
`
`under 35 U.S.C. §112.
`
`11.
`
`The Asserted Claims are invalid as anticipated and/or obvious in light of the prior
`
`art under 35 U.S.C. §§102-103.
`
`12.
`
`Roku contends that the Asserted Patents are unenforceable based on inequitable
`
`conduct.
`
`13.
`
`Roku did not have actual or constructive knowledge of the existence of and any
`
`infringement of each of the Asserted Patents, whether directly or through willful blindness, at least
`
`as early as the filing of the current action.
`
`14.
`
`Roku does not intend that its customers and personnel take actions that constitute
`
`infringement of the Asserted Claims.
`
`15.
`
`16.
`
`IOENGINE is not entitled to any of the recovery it seeks.
`
`IOENGINE is not entitled to damages on its claims of infringement. To the extent
`
`damages are to be awarded, IOENGINE’s calculation of a reasonable royalty relies on an improper
`
`methodology and improper evidence.
`
`17.
`
`18.
`
`IOENGINE is not entitled to enhanced damages.
`
`IOENGINE is not entitled to a finding of willful infringement.
`
`11
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 12 of 29
`
`IOENGINE is not entitled to entry of a permanent injunction.
`
`IOENGINE is not entitled to any other costs, interests, or further relief.
`
`This is an exceptional case in which Roku is entitled to attorneys’ fees, costs, and
`
`19.
`
`20.
`
`21.
`
`interest.
`
`22.
`
`To the extent not already addressed above, Roku disagrees with IOENGINE’s
`
`contentions above.
`
`V.
`
`STIPULATED FACTS
`
`The Parties will continue to meet and confer to attempt to resolve their objections to
`
`deposition designations and exhibits, and to identify additional potential stipulations, including
`
`stipulations related to the admissibility of exhibits, and will supplement these stipulations to the
`
`extent that additional stipulations are agreed by the Parties.
`
`A.
`
`The Parties
`
`1.
`
`Plaintiff
`
`IOENGINE, LLC (which will be referred to as “IOENGINE” or “Plaintiff”) is a limited
`
`liability company organized and existing under the laws of Delaware with a principal place of
`
`business at 22 Ensign Road, Norwalk, Connecticut.
`
`Mr. Scott McNulty is the founder and owner of IOENGINE and the sole named inventor
`
`on the Asserted Patents.
`
`2.
`
`Defendant
`
`Roku, Inc. (which will be referred to as “Roku” or “Defendant”) is a corporation organized
`
`and existing under the laws of the State of Delaware, having a principal place of business at 1155
`
`Coleman Ave., San Jose, California.
`
`12
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 13 of 29
`
`3.
`
`Nature of the Suit
`
`IOENGINE filed the present lawsuit on December 14, 2021, alleging infringement by
`
`Roku and seeking damages and other relief.
`
`B.
`
`The Asserted Patents
`
`1.
`
`The ’819 Patent
`
`United States Patent No. 10,447,819 is entitled “Apparatus, Method and System for a
`
`Tunneling Client Access Point.”
`
`The continuation application that issued as the ’819 Patent was filed on Sept. 22, 2017, and
`
`issued on Oct. 15, 2019.
`
`The ’819 Patent claims priority through an unbroken chain of continuation applications to
`
`U.S. Application No. 10/807,731, which was filed on March 23, 2004.
`
`The sole named inventor of the ’819 Patent is Scott McNulty.
`
`IOENGINE is the owner by assignment of the ’819 Patent.
`
`2.
`
`The ’584 Patent
`
`United States Patent No. 10,972,584 is entitled “Apparatus, Method and System for a
`
`Tunneling Client Access Point.”
`
`The continuation application that issued as the ’584 Patent was filed on Sept. 23, 2019, and
`
`issued on Apr. 6, 2021.
`
`The ’584 Patent claims priority through an unbroken chain of continuation applications to
`
`U.S. Application No. 10/807,731, which was filed on March 23, 2004.
`
`The sole named inventor of the ’584 Patent is Scott McNulty.
`
`IOENGINE is the owner by assignment of the ’584 Patent.
`
`13
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 14 of 29
`
`3.
`
`The Asserted Claims
`
`The patent claims at issue are Claims 187 and 192 of the ’819 Patent and Claims 10, 11,
`
`18, 20, 26, 27, 29, 48, 60, and 61 of the ’584 Patent, collectively the “Asserted Claims” of the
`
`“Asserted Patents.”
`
`Roku is not licensed (whether express, implied, or otherwise) and is unauthorized to
`
`practice any Asserted Claim.
`
`Claim 184 of the ’819 Patent and Claims 1 and 39 of the ’584 Patent are independent
`
`claims.
`
`Claims 187 and 192 of the ’819 Patent depend from claim 184.
`
`Claims 10 and 11 of the ’584 Patent depend from claim 9, which depends from claim 1.
`
`Claim 18 of the ’584 Patent depends from claim 17, which depends from claim 1.
`
`Claim 20 of the ’584 Patent depends from claim 19, which depends from claim 1.
`
`Claim 26 of the ’584 Patent depends from claim 25, which depends from claim 1.
`
`Claims 27 and 29 of the ’584 Patent depend from claim 1.
`
`Claim 48 of the ’584 Patent depends from claim 47, which depends from claim 39.
`
`Claim 60 of the ’584 Patent depends from claim 59, which depends from claim 39.
`
`Claim 61 of the ’584 Patent depend from claim 39.
`
`VI.
`
`DISPUTED ISSUES OF LAW
`
`The Parties have disputes of law and fact regarding infringement, validity, willfulness, and
`
`damages. But the Parties agree that there are no issues that require separate briefing at this time
`
`beyond the motion papers mentioned herein, and the Parties’ motions in limine or objections to
`
`evidence to be filed according to the Court’s Scheduling Order.
`
`14
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 15 of 29
`
`VII. TRIAL CONDUCT, DISCLOSURES, AND STIPULATIONS
`
`The following stipulations were agreed upon by the parties, as discussed below, and are
`
`made a part of this Pretrial Order.
`
`The Parties agree to the following procedure which will govern the disclosure of exhibits,
`
`witnesses, deposition testimony, and demonstratives to use at trial and the process to identify any
`
`objections remaining between the parties with regard to these disclosures:
`
`A.
`
`Motions
`
`All motions for judgment as a matter of law pursuant to Fed. R. Civ. P. 50(a) may be
`
`brought to the Court orally or in writing, at any time before the jury begins deliberations. Unless
`
`the Court sets alternative deadlines, all oppositions to motions filed pursuant to Fed. R. Civ. P.
`
`50(b) must be filed within 28 days of the filing of the motion. All replies in support of the motions
`
`must be filed within 21 days of service of any oppositions. The parties reserve their right to seek
`
`reasonable extension of these deadlines subject to the Court’s approval.
`
`B.
`
`Exhibits
`
`The Exhibit Lists set forth the parties’ exhibits including all exhibits they may offer into
`
`evidence, except for impeachment exhibits, which may or may not be introduced into evidence.
`
`The parties’ exhibit lists include exhibits that may not necessarily be introduced into evidence. A
`
`party’s failure to introduce any exhibit appearing on its list shall not be commented on during trial.
`
`The parties reserve the right to use or offer exhibits for purposes of impeachment that are not
`
`included in the Exhibit Lists. Each party reserves the right to add additional exhibits to its exhibit
`
`list, for good cause shown, by agreement of the parties, or as ordered by the Court.
`
`The parties will provide to each other’s counsel of record via email a written list of any
`
`exhibits, by exhibit number, for each witness that it intends to call by way of direct examination
`
`in advance of their introduction. The parties agree that these disclosures will occur no later than
`
`15
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 16 of 29
`
`6:30 pm on the calendar day before their introduction (e.g., Sunday evening for a witness to be
`
`called on a Monday). Physical exhibits must be identified and made available for inspection by
`
`the same time. Any objections to the identified exhibits shall be provided no later than 8:00 pm on
`
`the calendar day before the exhibits are proposed to be introduced and the parties shall meet and
`
`confer telephonically or in person in an attempt to resolve any objections to the exhibits beginning
`
`at 9:00 pm the day the objections are provided. The parties will continue in good faith to meet and
`
`confer regarding exhibits and if objections remain unresolved, the parties will cooperate in seeking
`
`to have the Court resolve any disputes prior to the introduction of the exhibit.
`
`The parties may use exhibits listed on the joint exhibit list or the other party’s respective
`
`exhibit list attached hereto to the same effect as though such exhibits were on its own exhibit list,
`
`subject to all evidentiary objections. However, another party’s exhibit is not automatically
`
`admissible by virtue of being on an exhibit list or over an objection; a party seeking to introduce
`
`another party’s exhibit must still have a witness sponsor the exhibit into evidence subject to any
`
`objections. The listing of an exhibit by a party on its exhibit list does not waive any evidentiary or
`
`other objections to that exhibit should the opposing party attempt to offer it into evidence. Any
`
`exhibit, once admitted, may be used equally by each party.
`
`The parties agree that any description of a document on an exhibit list is provided for
`
`convenience only and shall not be used as an admission or otherwise as evidence regarding the
`
`listed document or any other listed document.
`
`The parties agree that any date listed on the exhibit list is not evidence of nor an admission
`
`of the date of the document, and that failing to list a date is neither evidence of nor an admission
`
`of whether the document is dated.
`
`16
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 17 of 29
`
`Legible copies of the Asserted Patents, their prosecution histories and USPTO assignment
`
`records may be offered and received in evidence in lieu of certified copies thereof, subject to all
`
`other objections which might be made to the admissibility of certified copies.
`
`The parties also reached the following agreement and stipulation concerning the
`
`authenticity and admissibility of documents produced by the parties, including to avoid the cost
`
`and burden associated with obtaining testimony to authenticate documents (including source
`
`code), to establish that documents are business records, or to correlate source code with
`
`components that are included in particular devices:1 Any trial exhibit that was produced in
`
`discovery by IOENGINE or Roku and that on its face appears to have been authored by an
`
`employee, officer, or agent of the party producing such document, shall be deemed a true and
`
`correct copy of a document maintained in that party’s files as of the date of the party’s document
`
`collection under Federal Rule of Evidence 901. For the avoidance of doubt, this stipulation applies
`
`to documents bearing the following prefixes: IOENGINE and ROKU.
`
`C.
`
`Witnesses
`
`The parties agree to disclose the witnesses in the order that they will be called. No later
`
`than 6:30 p.m. two calendar days before their introduction (e.g., by 6:30 pm on Tuesday for
`
`witnesses appearing on Thursday), counsel shall provide to opposing counsel the names and order
`
`of witnesses to be called (both live and by deposition). The parties will raise, and will cooperate
`
`1 For avoidance of doubt, the parties intend for these stipulations to satisfy any requirements to
`authenticate and overcome the hearsay rule as to documents and source code, including as
`articulated in Wi-Lan Inc. v. Sharp Elecs. Corp., 992 F.3d 1366 (Fed. Cir. 2021). However, the
`parties do not waive any objections related to periodicals, news articles, or websites (other than
`the parties’ websites), and do not waive any objections as to the categories of documents addressed
`in the parties’ motions in limine. In addition, the parties reserve the right to object to exhibits
`created by experts.
`
`17
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 18 of 29
`
`in seeking to have the Court resolve, any objections to the identity of witnesses prior to the
`
`conclusion of the Pretrial Conference. Witnesses who are not on either parties’ witness list at the
`
`time of the Pretrial Conference will not testify absent good cause shown.
`
`The Parties agree that more than one attorney may handle an expert witness during a
`
`particular phase of the trial (i.e., jury versus bench) if that expert witness is addressing more than
`
`one issue (e.g., infringement and validity). But on any particular issue, only one attorney may
`
`examine the expert witness.
`
`Fact witnesses are not to be allowed into the courtroom before they testify on the stand.
`
`The only exception is the parties’ client representative, who will be allowed in the courtroom even
`
`if testifying in the case. Expert witnesses can observe any testimony.
`
`Prior to the start of the direct and cross-examination of any witness, the parties agree to
`
`provide the other party with a witness binder that contains all of the exhibits expected to be used
`
`on direct or cross-examination of that witness.
`
`D.
`
`Deposition Testimony2
`
`For any witnesses whose testimony a party intends to present by deposition, the parties
`
`shall identify a list of deposition designations to be played or read to the jury by 6:30 p.m. two
`
`calendar days before the designations are to be played or read to the jury. Only deposition
`
`designations identified in this Pretrial Order may be identified to be played or read to the jury. Any
`
`objections and counter-designations shall be provided no later than 3:00 p.m. the day before the
`
`designations are to be played or read to the jury. Only counter-designations identified in this
`
`2 To the extent permitted by the Federal Rules of Evidence and rulings from the Court, the parties
`agree that depositions may be used at trial whether or not the transcripts of such depositions have
`been signed and filed as set forth in Federal Rule of Civil Procedure 30(b).
`
`18
`
`

`

`Case 6:21-cv-01296-ADA Document 292 Filed 08/30/23 Page 19 of 29
`
`Pretrial Order may be identified as counter-designations to be played or read to the jury. Any
`
`objections to counter-designations shall be provided no later than 6:30 p.m. the day the counter-
`
`designations are provided. The party introducing the deposition testimony shall be responsible for
`
`editing the deposition video to include the testimony and any counter-designation testimony, and
`
`remove any attorney objections/colloquy and provide a final version of the deposition testimony
`
`excerpts (testimony clip report) to the other party by 8:00 p.m. the day before it is to be shown to
`
`the jury. If the party intends to read the deposition testimony into the record instead of playing