Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 1 of 34
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`IDENTITY SECURITY LLC,
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`Civil Action No. 1:22-CV-00058-ADA
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`Plaintiff,
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`Jury Trial Demanded
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`v.
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`APPLE INC.
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`Defendant.
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`[PROPOSED]
`JOINT FINAL PRETRIAL ORDER
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`1
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 2 of 34
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`I. APPEARANCES OF COUNSEL ............................................................................................4
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`Table of Contents
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`II. Statement of Jurisdiction ..........................................................................................................5
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`III.
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`IV.
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`STIPULATED FACTS ..........................................................................................................5
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`STATEMENT OF THE CASE ..............................................................................................7
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`V. PARTIES’ CONTENTIONS.....................................................................................................9
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`VI.
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`STIPULATIONS AND TRIAL DISCLOSURES ...............................................................12
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`A.
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`B.
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`Motions ..................................................................................................................12
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`Exhibits ..................................................................................................................13
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`C. Witnesses ...............................................................................................................16
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`1.
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`Objections To Expert Testimony ................................................................18
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`Deposition Testimony ............................................................................................18
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`Demonstrative Exhibits ..........................................................................................20
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`Disclosures for Opening Statements ......................................................................23
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`Disclosures for Closing Arguments .......................................................................23
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`Resting ...................................................................................................................23
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`Materials Designated Confidential ........................................................................24
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`VII. Motions in Limine...............................................................................................................24
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`VIII. Jury Charge .........................................................................................................................27
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`IX. Voir Dire ..............................................................................................................................27
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`X. ORDER OF PRESENTATION AT TRIAL ............................................................................27
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`XI. Length of Trial ....................................................................................................................28
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`XII. Memoranda on disputed issues of law ................................................................................29
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`XIII. LIST OF PENDING MOTIONS ........................................................................................29
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`XIV. Additional Matters .............................................................................................................30
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`A.
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`Trial Conduct And Disclosures ..............................................................................30
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 3 of 34
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`B.
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`C.
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`D.
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`Handling Of Confidential Information At Trial .....................................................30
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`Less Than Unanimous Verdict ...............................................................................31
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`Certification ...........................................................................................................31
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`XV. CERTIFICATE OF SERVICE ............................................................................................34
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 4 of 34
`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 4 of 34
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`The Pretrial Conference in this case is set for September 16, 2024. Plaintiff Identity
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`Security LLC (‘“Plaintiff,’ “Identity Security,’ or “Identity”) and Defendant Apple Inc.
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`(“Defendant” or “Apple”) hereby submit the following proposed Joint Pretrial Order pursuant to
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`the Amended Scheduling Order (Dkt. No. 228),
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`the Court’s Standing Order Governing
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`Proceedings (““OGP”) 4.4—Patent Cases, the Court’s Amended Standing Order on Pretrial
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`Procedures and Requirements in Civil Cases, the Federal Rules of Civil Procedure, and the Local
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`Rules of this Court.
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`L.
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`APPEARANCES OF COUNSEL
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`Appearances of Counsel are attached as Exhibit 1 and reproduced below.
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`Attorneys for Plaintiff
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`Attorneys for Defendant
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`John P. Lahad (Texas 24068095)
`Brian D. Melton (Texas 24010620)
`Meng Xi (Texas 24132850)
`Taylor Hoogendoorn (Texas 24130794)
`Thomas DelRosario (Texas 24110645)
`SUSMAN GODFREYL.L.P.
`1000 Louisiana, Suite 5100
`Houston, TX 77002
`Telephone: (713) 653-7859
`Facsimile: (713) 654-6666
`jlahad@susmangodfrey.com
`bmelton@susmangodfrey.com
`mxi@ susmangodfrey.com
`thoogendoom@susmangodfrey.com
`tdelrosario@susmangodfrey.com
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Tel: (713) 651-9366
`Fax: (713) 654-6666
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`Brian C. Nash
`Texas Bar No. 24051103
`Regan J. Rundio
`Texas Bar No. 24122087
`MORRISON & FOERSTER LLP
`300 Colorado Street, Suite 1800
`Austin, Texas 78701
`Telephone: (512) 617-0650
`BNash@mofo.com
`RRundio@mofo.com
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`John M. Desmarais (pro hac vice)
`Cosmin Maier(pro hac vice)
`Leslie M. Spencer(pro hac vice)
`Kerri-Ann Limbeek (pro hacvice)
`Michael Wueste (pro hac vice)
`Jun Tong (pro hac vice)
`William Vieth (pro hac vice)
`Asim Zaidi (pro hac vice)
`Gillian F. Moore (pro hac vice)
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`jdesmarais@desmaraisllp.com
`cmaier@desmaraisllp.com
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 5 of 34
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`lspencer@desmaraisllp.com
`mwueste@desmaraisllp.com
`jtong@desmaraisllp.com
`wvieth@desmaraisllp.com
`azaidi@desmaraisllp.com
`gmoore@desmaraisllp.com
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`Elizabeth R. Moulton (pro hac vice)
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`405 Howard St.
`San Francisco, CA 94105
`Telephone: (415) 773-5700
`Facsimile: (415) 773-5759
`emoulton@orrick.com
`
`Jeffrey T. Quilici
`Texas Bar No. 24083696
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`300 W. 6th Street, Suite 1850
`Austin, TX 78701
`Telephone: (512) 582-6950
`Facsimile: (512) 582-6949
`jquilici@orrick.com
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`Attorneys for Defendant Apple Inc.
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`STATEMENT OF JURISDICTION
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`This Court has subject matter jurisdiction over this action under Title 28, U.S.C. §§ 1331
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`II.
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`and 1338(a), because this action arises under the Patent Laws of the United States, 35 U.S.C. § 1
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`et seq. Subject matter jurisdiction, personal jurisdiction, and venue under 28 U.S.C. §§ 1391(b)
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`and 1400(b) are not disputed in this case.
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`III.
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`STIPULATED FACTS
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`The parties agree to the following stipulated facts. The parties will meet and confer after
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`final rulings on all pretrial issues have been entered to determine whether any additional facts may
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`be stipulated:
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`1.
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`Identity Security LLC is a limited liability company with a principal place of
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 6 of 34
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`business in Houston, Texas.
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`2.
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`Apple Inc. is a corporation organized and existing under the laws of California with
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`its principal place of business at 1 Apple Park Way, Cupertino, California.
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`3.
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`Identity is the identified assignee of U.S. Patent No. 7,493,497, titled “Digital Identity
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`Device” (“the ’497 Patent”); U.S. Patent No. 8,020,008, titled “Microprocessor Identity Device”
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`(“the ’008 Patent”); U.S. Patent No. 8,489,895, titled “Microprocessor Identity Device” (“the ’895
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`Patent”); and U.S. Patent No. 9,507,948, titled “Digital Identity Device” (“the ’948 Patent”).
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`4.
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`On May 3, 2021, Identity filed a Complaint asserting infringement of the ’497, ʼ008,
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`ʼ895, and ’948 Patents (collectively, the “Asserted Patents” or “Patents-in-Suit”).
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`5.
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`On March 17, 2023, Identity filed a First Amended Complaint asserting
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`infringement of the Asserted Patents.
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`6.
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`On April 7, 2023, Apple filed an Answer to the First Amended Complaint and
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`Counterclaims.
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`7.
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`8.
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`On April 28, 2023, Identity filed an Answer in Response to Apple’s Counterclaims.
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`The ’497 patent issued on February 17, 2009, from a non-provisional Application
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`No. 09/658,387, filed on September 8, 2000. U.S. Patent Application No. 09/658,387 claims
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`priority to provisional application no. 60/179,989, filed on February 3, 2000.
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`9.
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`The ’008 patent issued on September 13, 2011, as a continuation of U.S.
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`Application No. 09/658,387, filed on September 8, 2000, which ultimately issued as the ’497
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`patent. U.S. Patent Application No. 09/658,387 claims priority to provisional application no.
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`60/179/989, filed on February 3, 2000.
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`10.
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`The ’895 Patent issued on July 16, 2013 as a continuation of Application No.
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`12/350,139, filed on January 7, 2009, which ultimately issued as the ’008 Patent, which itself is a
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`continuation of Application No. 09/658,387, filed on September 8, 2000, which issued as the ’497
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 7 of 34
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`Patent. The ’895 Patent claims priority to provisional application no. 60/179,989, filed on
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`February 3, 2000.
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`11.
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`The ’948 patent issued on November 29, 2016, as a continuation of U.S.
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`Application No. 13/208,035, filed on August 11, 2011, which ultimately issued as the ’895 Patent,
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`which itself is a continuation of Application No. 12/350,139, filed on January 7, 2009, which is
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`now the ’008 Patent, which itself is a continuation of Application No. 09/658,387, filed on
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`September 8, 2000, which is now the ’497 Patent. The ’948 Patent claims priority to provisional
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`application no. 60/179,989, filed on February 3, 2000.
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`12.
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`13.
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`The ’008 Patent, ’895 Patent, and ’948 Patent expired on September 8, 2020.
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`The ’497 patent expired on February 8, 2023.
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`Any party, with prior notice to all other parties, may read any or all of the stipulated facts to
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`the jury, and will be charged for the time used to do so. If one party reads a portion of the
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`uncontested facts, the other party may immediately thereafter read any additional portion as
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`appropriate for purposes of completeness.
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`IV.
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`STATEMENT OF THE CASE
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`The parties’ statement of the case is attached as Exhibit 2 and reproduced below.
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`Plaintiff’s Statement:
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`This is an action for patent infringement. Identity Security LLC, or just Identity Security, is
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`the plaintiff in this action and the owner of several United States Patents, including U.S. Patent No.
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`7,493,497, U.S. Patent No. 8,020,008, U.S. Patent No. 8,489,895, and U.S. Patent No. 9,507,948.
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`Identity Security LLC is owned by Mr. Aureliano Tan, who is the named inventor on each of the
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`Patents. Identity Security accuses Apple of infringing certain claims in each of those patents. This
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`includes Claims 1, 3, 4, and 12 of U.S. Patent No. 7,493,497; Claims 1, 2, 3, 6, and 7 of U.S. Patent
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`No. 8,020,008; Claim 5 of U.S. Patent No. 8,489,895; and Claim 1 of U.S. Patent No. 9,507,948 (“the
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`Asserted Claims”). In particular, Identity Security alleges that Apple directly infringes the Asserted
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`Claims by making, using, selling, offering for sale, and/or importing into the United States certain
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`Apple iPhones between May 3, 2015 and February 8, 2023 in violation of 35 U.S.C. § 271. The
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`Accused Products generally include iPhones from the iPhone 5s, which was the first iPhone to include
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`Touch ID fingerprint recognition functionality, to the iPhone 14 product generation. Identity seeks
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`damages of no less than a reasonable royalty for Apple’s infringement, together with interest and
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`costs. Identity reserves the right to seek attorneys’ fees under 35 U.S.C. § 285. Plaintiff further
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`contends that the Asserted Claims are valid, eligible, enforceable, and infringed, and that the
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`affirmative defenses and counterclaims raised by Apple do not bar or otherwise limit Plaintiff’s
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`claims in any way.
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`Defendant’s Statement:
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`Identity Security alleges that Apple directly infringes the Asserted Claims by making, using,
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`selling, or offering for sale in the United States, between May 3, 2015 and February 8, 2023, certain
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`iPhones that include the Secure Enclave component of Apple’s System-on-a-Chip (collectively,
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`the “Accused Products” or “Accused iPhones”).
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`Apple contends that it does not infringe and has not infringed, directly or indirectly, either
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`literally or under the doctrine of equivalents, any of the asserted claims of the Patents-in-Suit.
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`Apple contends that the Asserted Claims are invalid. Apple denies that Identity Security is entitled
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`to any monetary damages, attorneys’ fees, or any other relief that it seeks. Apple further seeks
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`declaratory relief of (1) noninfringement and (2) invalidity for all Asserted Claims. Apple also
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`seeks, pursuant to 35 U.S.C. § 285 and/or other applicable laws, its costs, expenses, and
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`disbursements, including attorneys’ fees, in defending this action. Apple also requests that the
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`Court award Apple any further relief that the Court deems just or proper.
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 9 of 34
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`V.
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`PARTIES’ CONTENTIONS
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`The parties’ contentions are attached hereto as Exhibit 3.
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`Plaintiff’s Contentions
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`Plaintiff incorporates by reference in full its First Amended Complaint, Plaintiff’s
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`infringement contentions as supplemented and amended, Plaintiff’s interrogatory responses, and
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`Plaintiff’s expert reports.
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`Plaintiff is the sole and rightful owner of the Asserted Patents with full rights to pursue
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`recovery of royalties or damages for infringement. Identity contends that the priority date of the ’497,
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`ʼ008, ʼ895, and ’948 Patents is February 3, 2000.
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`Identity contends that Apple infringes claims 1, 3, 4, and 12 of the ’497 Patent by making,
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`using, selling, importing, or offering for sale in the United States the Accused Products as set forth
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`in the Expert Report of Samuel Russ, Ph. D. dated November 29, 2023.
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`Identity contends that Apple infringes claims 1, 2, 3, 6, and 7 of the ’008 Patent by making,
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`using, selling, importing, or offering for sale in the United States the Accused Products as set forth
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`in the Expert Report of Samuel Russ, Ph. D. dated November 29, 2023.
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`Identity contends that Apple infringes claim 5 of the ’895 Patent by making, using, selling,
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`importing, or offering for sale in the United States the Accused Products as set forth in the Expert
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`Report of Samuel Russ, Ph. D. dated November 29, 2023.
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`Identity contends that Apple infringes claim 1 of the ’948 Patent by making, using, selling,
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`importing, or offering for sale in the United States the Accused Products as set forth in the Expert
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`Report of Samuel Russ, Ph. D. dated November 29, 2023.
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`Identity contends that it has been damaged by Apple’s infringement of the ʼ497 Patent, ʼ008
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`Patent, ʼ895 Patent, and ʼ948 Patent, and is entitled to no less than a reasonable royalty under 35
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`U.S.C. § 284, as set forth in the April 30, 2024, Expert Reports of Dan Lindsay and Eric Cole.
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`Identity contends that the starting period for the reasonable royalty is May 3, 2015, the date
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`six years before the filing of the complaint, as set forth in the as set forth in the April 30, 2024, Expert
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`Reports of Dan Lindsay and Eric Cole.
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`Identity contends that it is entitled to reasonable costs and interest.
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`Identity contends that each of the patents-in-suit has been issued by the United States Patent
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`and Trademark Office and therefore is entitled to a presumption of validity, and that Apple cannot
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`prove by clear and convincing evidence that any of the asserted claims is invalid as being directed to
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`ineligible subject matter under 35 U.S.C. § 101; anticipated in view of prior art under 35 U.S.C.
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`§ 102; obvious in view of prior art under 35 U.S.C. § 103; or for lack of written description, not
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`enabled or indefiniteness under 35 U.S.C. § 112, as set forth in the Rebuttal Expert Report of Samuel
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`Russ, Ph. D. dated January 10, 2024.
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`Identity contends that its damages for Apple’s past infringement of the ’497, ʼ008, ʼ895, and
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`’948 Patents are not barred or limited by 35 U.S.C. § 287, or any other legal or equitable theory
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`asserted by Apple.
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`Identity contends that it is entitled to a reasonable royalty for past infringement from May 3,
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`2015 up to the date of expiration of the last-to-expire patent (the ʼ497 patent on February 8, 2023),
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`as set forth in the Expert Report of Dan Lindsay Relating to Damages.
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`Plaintiff seeks the following relief:
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`1. A judgment that Defendant Apple has directly infringed, either literally or under the
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`doctrine of equivalents, one or more claims of the ’497 Patent, the ’008 Patent, the ’895
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`Patent, and the ’948 Patent;
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`2. A judgment and order requiring Defendant Apple to pay Plaintiff damages under 35
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`U.S.C. § 284;
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`3. A judgment and order requiring Defendant Apple to pay the costs of this action;
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 11 of 34
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`4. A judgment and order requiring Defendant Apple to pay Plaintiff pre-judgment and post-
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`judgment interest on the damages awarded;
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`5. A judgment and order awarding fees under 35 U.S.C. § 285 if this case is found to be
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`exceptional; and
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`6. Such other and further relief as the Court deems just and equitable.
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`Defendant’s Contentions
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`Apple incorporates by reference in full its Answer to Plaintiff’s Amended Complaint, Apple’s
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`invalidity contentions as supplemented and amended, and Apple’s expert reports.
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`Apple contends that it does not infringe and has not infringed, directly or indirectly, either
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`literally or under the doctrine of equivalents, any valid and enforceable claim of the Asserted Patents.
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`Dkt. 97 at 12.
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`Apple contends that the claims of the Asserted Patents are invalid under 35 U.S.C. § 102
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`because the claims are anticipated by the prior art. Dkt. 97 at 12. Apple contends that the claims of
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`the Asserted Patents are invalid under 35 U.S.C. § 103 because the claims are obvious in view of the
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`prior art. Dkt. 97 at 12. On April 25, 2024, the Court denied Identity’s motion for partial summary
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`judgment as to no invalidity. Dkt. 229 at 2.
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`Apple contends that the claims of the Asserted Patents are invalid for failure to satisfy the
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`conditions set forth in 35 U.S.C. § 112, including inadequate written description and lack of
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`enablement. Dkt. 97 at 12.
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`Apple contends that the claims of the Asserted Patents are directed to patent-ineligible subject
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`matter and are invalid under 35 U.S.C. § 101 because the claims are directed to abstract ideas or other
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`non-statutory subject matter. Dkt. 97 at 12.
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`Apple contends that Identity is estopped from asserting any interpretation of the claims of the
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`Asserted Patents that would be broad enough to cover any of Apple’s Accused iPhones alleged to
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`infringe the Asserted Patents under the doctrine of equivalents based on amendments, statements,
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`representations, and admissions made during the prosecution of the Asserted Patents and in
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`opposition to petitions for inter partes review, under the theory of ensnarement and because
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`limitations were added for patentability purposes such that prosecution history estoppel prohibits
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`application of the doctrine of equivalents.
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`Apple seeks the following relief:
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`A. A declaration that Apple does not infringe and has not infringed any Asserted Claim
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`of the Patents-in-Suit literally or under the doctrine of equivalents, directly or
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`indirectly (whether contributorily or by inducement);
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`B. A declaration that all Asserted Claims of the Patents-in-Suit are invalid for failure to
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`comply with one or more requirements of the Patent Act, Title 35 of the United States
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`Code, including without limitation, 35 U.S.C. §§ 102, 103, and 112;
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`C. A finding that this case is exceptional under 35 U.S.C. § 285 and/or other applicable
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`laws, and awarding Apple its costs, expenses, and disbursements in this action,
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`including reasonable attorneys' fees; and
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`D. Awarding Apple any other and additional relief as this Court deems just and proper.
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`VI.
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`STIPULATIONS AND TRIAL DISCLOSURES
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`The following stipulations were agreed upon by the parties as discussed below and are
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`made a part of this Pretrial Order.
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`The parties agree to the following procedure which will govern the disclosure of
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`witnesses, exhibits, deposition testimony and demonstratives to use at trial and the process to
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`identify any objections remaining between the parties with regard to these disclosures:
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`A. Motions
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`All motions for judgment as a matter of law pursuant to Fed. R. Civ. P. 50(a) will be brought
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`to the Court, and responded to, orally, and argued during breaks when the jury is out of the
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`courtroom or at the beginning or end of the day after the jury has been dismissed. The parties agree
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`that such motions will be raised with the Court at the first break after the appropriate point during
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`trial so that the Court may inform the parties when such motions will be heard and when the Court
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`wishes to receive briefing pursuant to Fed. R. Civ. P. 50(b). Unless otherwise ordered, all motions
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`under Rule 50(b) must be filed no later than 28 days after the entry of judgment in accordance with
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`Federal Rule of Civil Procedure 50(b). Responses to any such motion must be filed within 28 days
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`of service of the motion. All replies in support of the motions must be filed within 21 days of service
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`of any oppositions. The parties reserve their right to seek reasonable extension of these deadlines
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`subject to the Court’s approval.
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`B.
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`Exhibits
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`The Exhibit Lists set forth the parties’ exhibits for their respective cases-in-chief; the lists
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`do not include potential impeachment material that is not introduced into evidence. The parties
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`reserve the right to offer exhibits for purposes of impeachment that are not included in the Exhibit
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`Lists. Plaintiff’s trial exhibits are identified with the prefix “PX,” starting with PX-1 and
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`Defendant’s trial exhibits are identified with the prefix “DX,” starting with DX-1.
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`Plaintiff’s Exhibit List with Defendant’s objections included is attached as Exhibit 4.
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`Defendant’s Exhibit List with Plaintiff’s objections included is attached as Exhibit 5.
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`The parties may use each other’s exhibits listed on the parties’ respective Exhibit Lists
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`attached hereto to the same effect as though it were on their own exhibit list, subject to all
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`evidentiary objections. Any exhibit, once admitted, may be used by either party. The listing of an
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`exhibit by a party on its Exhibit List does not waive any objections to that exhibit by the listing
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`party should the opposing party attempt to offer it into evidence. In other words, a party does not
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`waive its objections to an exhibit by including that exhibit on its own exhibit list. A party seeking
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`to introduce another party’s exhibit must still have a witness sponsor the exhibit into evidence as
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`described below subject to any objections.
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`With the exception of discovery admissions (i.e., interrogatory responses, request for
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`admission responses, Joint Statement of Uncontested Facts (Exhibit 6)), no exhibit will be
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`admitted unless offered into evidence through a witness, who must at least be shown the exhibit.
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`Exhibits with noted objections may not be published, displayed, or otherwise shown to the jury
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`until after they have been admitted into evidence. Once admitted, counsel may publish exhibits to
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`the jury without requesting to do so.
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`No later than 8:00 p.m. one calendar day before their introduction, counsel shall (1)
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`provide opposing counsel with an identification of trial exhibits to be used on direct examination
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`of each witness (both live and by deposition) and (2) make any non-documentary trial exhibits to
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`be used with the witness available for physical inspection. The parties will use good faith efforts to
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`only disclose exhibits that they actually expect to use in court. Any objections to the identified
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`exhibits shall be provided no later than 9:00 p.m. one calendar day before the exhibits are proposed
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`to be introduced and the parties shall meet and confer telephonically or in person in an attempt to
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`resolve any objections to the exhibits at 10:00 p.m. The parties will continue in good faith to meet
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`and confer regarding exhibits and if objections remain unresolved, the parties will cooperate in
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`seeking to have the Court resolve any disputes prior to the introduction of the exhibit.
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`[IS Position: The parties stipulate to the authenticity of each document that on its face
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`appears to be generated by a party (plaintiff or defendant) or a party’s wholly owned subsidiary.
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`The parties reserve the right to add additional deposition designations to establish the foundation
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`and authenticity of an exhibit to the extent the admissibility of a particular document is challenged.
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`Notwithstanding this stipulation, each party preserves its right to object to the document on any
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`ground other than authenticity.]
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 15 of 34
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`If a party proposes to read a statement by a party opponent from any request for admission
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`response, interrogatory response, or from the Joint Statement of Uncontested Facts (Exhibit 6),
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`they will provide notice of exactly the portion they intend to use by at least 8:00 p.m. the day
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`before the statement is intended to be used at trial. By at least 9:00 p.m., the other party shall
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`identify any additional portion of that statement that it proposes to be read for purposes of
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`completeness. This notice provision does not apply when a party intends to use the statement
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`during cross-examination or for impeachment purposes.
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`The parties agree that they will not pre-exchange or identify exhibits to be used with any
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`witness on cross examination. Documents, deposition transcripts, or portions thereof, or other
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`items, not specifically identified on the parties’ Exhibit Lists or offered into evidence, may still be
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`used at trial for purposes of cross examination, or impeachment, if otherwise competent for such
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`purposes, and may be admitted into evidence consistent with the requirements of the Federal Rules
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`of Evidence.
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`The parties agree that any description of a document on an exhibit list is provided for
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`convenience only and shall not be used as an admission or otherwise as evidence regarding the
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`listed document or any other listed document.
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`A legible copy of an exhibit may be offered and received into evidence in lieu of the
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`original, unless a genuine question is raised as to the authenticity of the original, or in
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`circumstances where it would be unfair to admit the copy in lieu of the original.
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`Legible copies of United States and foreign patents, the file prosecution histories of United
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`States patents, published foreign patent applications, and certified translations thereof (if in English
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`or translated into English) may be offered and received in evidence in lieu of certified copies thereof,
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`subject to all other objections which might be made to the admissibility of certified copies.
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 16 of 34
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`For exhibits that are Excel spreadsheets, PowerPoint presentations, images, video files, or
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`other electronic files, the parties may use electronic versions of such exhibits in their native format.
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`For demonstratives, the parties may copy-and-paste portions from original native versions of
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`exhibits that are included on the parties’ Exhibit Lists.
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`The parties will use their best efforts to ensure that only one version of a copy of a document
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`is admitted into evidence. The parties agree that other versions of exhibits listed in the parties’
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`Exhibit Lists that have been produced, cited, considered, or marked during the course of this
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`litigation may be substituted for versions of exhibits listed therein with otherwise substantively
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`identical documents. The party making such a substitution will provide notice of the substitution,
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`including any annotations, according to the disclosure deadlines for exhibits referenced above.
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`None of the foregoing stipulations shall serve as a waiver of any other objections a party may
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`have to any trial exhibits or abrogate the requirement that a party offering an exhibit into evidence
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`satisfy any other rules governing the admissibility of evidence set forth in the Federal Rules of
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`Evidence, the Federal Rules of Civil Procedure, the Court’s Local Rules, the Court’s practices, or
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`any other applicable rule or regulation. The parties agree to meet and confer in good faith to resolve
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`objections to trial exhibits prior to their introduction at trial.
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`[Apple Position: Failure to comply with these procedures, absent an order from the Court
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`or an agreement by the parties, limits a party to objections at the time the exhibit or demonstrative
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`is offered live. Parties may not submit briefing or raise objections during the morning colloquy
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`with the Court unless such objections were raised during the prior evening’s meet and confer.]
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`C. Witnesses
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`Plaintiff’s Witness List is attached as Exhibit 7.
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`Defendant’s Witness List is attached as Exhibit 8.
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`Plaintiff’s Objections to Defendant’s Witness List is attached as Exhibit 9.
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`Case 1:22-cv-00058-ADA Document 269 Filed 09/11/24 Page 17 of 34
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`Defendant’s Objections to Plaintiff’s Witness List is attached as Exhibit 10. The parties
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`agree to disclose the witnesses in the order that they will be called. No later than 7:00 p.m. two
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`calendar days before they are to be called, counsel shall provide to opposing counsel the names and
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`order of witnesses to be called (both live and by deposition). If counsel intends to change the order
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`of witnesses or the matter of presentation of witness testimony (i.e., by live video feed) due to a
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`COVID-19 or other health related disruption, they shall notify the other side immediately
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`according to the parties’ agreement regarding how to deal with such disruptions, set forth below.
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`Any witness not listed in Exhibits 7 or 8 will be precluded from testifying, absent good
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`cause shown and an order of the Court allowing the testimony. However, the parties reserve the
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`right to call any rebuttal witnesses (who are not presently identifiable) as may be necessary, on
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`reasonable notice to the opposing party.
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`Any fact witness who will be made available to testify live in court [Apple Position: (a)
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`will be called only once; and (b)] will not be presented by either party by deposition testimony
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`made pursuant to Fed. R. Civ. P. 30(b)(1). Notwithstanding the preceding sentence, parties may
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`use deposition testimony for purposes of impeachment and deposition testimony made pursuant to
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`Fed. R. Civ. P. 30(b)(6) for any purpose consistent with the Federal Rules of Civil Procedure, the
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`Federal Rules of Evidence, the Local Rules of this Court, and this Joint Pretrial Order. Fact
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`witnesses are not to be allowed into the courtroom until after they provide their live testimony,
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`have been excused, and will not testify again at the trial. Fact witnesses shall not review the
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`transcripts of the trial testimony of other fact witnesses. This provision does not apply to one
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`designated corporate representative for Identity Security and one designated corporate
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`representative for Apple, who will be permitted to attend the entire trial (subject to exclusion as
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`appropriate for certain high