Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`JAWBONE INNOVATIONS, LLC,
` Plaintiff,
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`v.
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`APPLE INC.,
` Defendant.
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`CIVIL NO. 6:21-CV-00984-ADA
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`DISCOVERY AND SCHEDULING ORDER
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`Before the Court is Apple Inc.’s (“Defendant”) renewed motion for leave to supplement
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`the record on its motion for transfer. ECF No. 99. After considering the motion and the applicable
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`case law, the Court hereby GRANTS Defendant’s motion for leave to supplement.
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`A party may move to transfer a case for “the convenience of parties and witnesses, in the
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`interest of justice.” 28 U.S.C. § 1404. As part of this inquiry, Courts look to the locations of the
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`parties, the witnesses, and the evidence, among other factors. In re Volkswagen AG, 371 F.3d 201,
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`203 (5th Cir. 2004) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)). The Court
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`intends to make a fair, evidenced-based ruling on Defendant’s pending motion to transfer based
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`on an accurate identification of the witnesses, parties, and evidence relevant to this case.
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`Supplementing the record furthers this goal. In fairness, if one party supplements its motion, the
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`Court will give the other party the same opportunity. Thus, the Court permits both parties to
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`provide supplemental evidence and arguments. Thus, the Court finds it prudent to have the parties
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`to re-brief the motion to transfer in accordance with the appended schedule. Defendant has assured
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`this Court that “a continuance would not affect the overall trajectory of this case” because fact
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`discovery should commence regardless of whether a continuance is or is not granted. ECF No. 99
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`at 5–6.
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 2 of 19
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`A. General Organization of the Court’s Default Schedule
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`The Court’s default schedule is generally organized into the following stages: pleadings,
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`optional transfer briefing, initial contentions, early Markman, fact discovery, expert discovery,
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`substantive motions, pretrial conference, and trial. See, generally, Standing Order Governing
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`Proceedings in Patent Cases 4.2 (“OGP”).
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`At the initial contentions stage, parties exchange their initial infringement and invalidity
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`theories. Unlike many other courts, this Court holds and early Markman hearing and defers fact
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`discovery until after the Markman hearing. OGP at 14. This Court does so to protect defendants
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`from frivolous plaintiffs who seek settlements based not on merit but based on the burden of fact
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`discovery, a tactic referred to “patent-trolling.” Hence, the Court’s default schedule defers fact
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`discovery until after the Markman hearing so that parties can cost-effectively reach the first merit
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`milestone in a case. Greenthread, LLC v. Intel Corp., No. 6:22-CV-00105-ADA, 2022 WL
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`4004781, at *5 (W.D. Tex. Sept. 1, 2022).
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`After the Markman hearing, the default schedule provides for fact discovery, followed by
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`expert discovery. After discovery, substantive motions are due. With few exceptions such as venue
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`and jurisdictional motions, the Court hears and rules on all substantive, merit-based motions at the
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`pretrial conference, which usually occurs about a week before trial. Statistically, the vast majority
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`of cases will settle before the pretrial conference or trial. This procedure allows the Court to
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`effectively manage its docket and avoid case congestion.
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`B. History of the Court’s Transfer Motion Procedures
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`On November 20, 2020, the Federal Circuit ruled that “a Markman hearing and claim
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`construction order are two of the most important and time-intensive substantive tasks a district
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`court undertakes in a patent case.” In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. Nov. 9, 2020).
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 3 of 19
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`Less than three months later, the Federal Circuit ordered, “the district court must stay all
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`proceedings concerning the substantive issues in the case until such time that it has issued a ruling
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`on the transfer motion.” In re SK hynix Inc., 835 F. App’x 600, 601 (Fed. Cir. Feb. 1, 2021).
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`To comply, this Court immediately began delaying its Markman hearings until it issued
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`orders on pending inter-district transfer motions. See, e.g., Order Resetting Markman Hearing,
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`paSafeShare LLC v. Microsoft Corp., 6:20-cv-00397-ADA, (W.D. Tex. Feb. 9, 2021) ECF No. 40
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`(rescheduling Markman hearings in view of pending transfer motion). The OGP has a standing
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`order to this effect. OGP at 5–6. The OGP also allowed for limited “venue or jurisdictional
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`discovery” before the Markman hearing. Id. at 5.
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`Parties then began abusing this process under an earlier version of the OGP. Defendants
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`strategically waited to file their transfer motions to delay the case. After the permitted venue
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`discovery, transfer motion briefing would not ripen by the Markman hearing, preventing this Court
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`from issuing timely rulings. See, e.g., Apple Inc.’s Status Report, Scramoge Tech. Ltd. v. Apple
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`Inc., 6:21-cv-00579-ADA (W.D. Tex. Feb. 8, 2022) ECF No. 54 (“the motion will not be fully
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`briefed and ready for resolution any earlier than March 14, 2022. The Markman hearing in this
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`case is set for March 8, 2022”). This delay tactic employed by defendants forced the Court to
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`unnecessarily reschedule the Markman hearings at the great inconvenience of all parties. To curb
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`this abuse, the latest OGP requires transfer motions to be filed earlier and opens fact discovery
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`after the originally scheduled Markman date, regardless of whether the Markman hearing is
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`delayed. OGP at 6.
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`The venue dispute process should work as follows. So that this Court can prioritize transfer
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`motions early in a case in accordance with the Federal Circuit’s order, defendants may file a motion
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`to transfer venue early in the case, along with evidence and declarations. OGP at 5–6; In re SK
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`hynix Inc., 835 F. App’x at 601. Venue discovery then automatically opens. OGP at 5. Plaintiffs
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`will serve venue discovery requests and depose witnesses. Defendants provide the requested
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`discovery. Then, plaintiffs file their opposition supported by evidence uncovered during venue
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`discovery. Defendants then file their reply. This allows the Court to make a fair, evidence-based
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`ruling. However, both plaintiffs and defendants have repeatedly frustrated the Court by failing to
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`present the Court the evidence needed to make a fair ruling.
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`C. The General Need for a Revised Schedule
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`A party may move to transfer a case for “the convenience of parties and witnesses, in the
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`interest of justice.” 28 U.S.C. § 1404. As part of this inquiry, Courts look to the locations of the
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`parties, the witnesses, and the evidence, among other factors. In re Volkswagen AG, 371 F.3d 201,
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`203 (5th Cir. 2004) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)).
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`The Court intends to make a fair, evidenced-based ruling on Defendant’s pending motion
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`to transfer, ECF No. 38, based on an accurate identification of the witnesses, parties, and evidence
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`relevant to this case. Supplementing the record furthers this goal. In fairness, if one party raises
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`new evidence or arguments in a motion, the Court will give the other party a fair opportunity to
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`respond. Thus, the Court permits both parties to provide supplemental evidence and arguments.
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`The Court will give Plaintiff an opportunity to investigate and respond to the new facts and
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`arguments that Apple wishes to supplement.
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`Full fact discovery will allow the parties to provide the Court with the best evidence for
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`ruling on a motion to transfer. In this Court’s experience, speculation and incomplete discovery
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`often plagues early transfer motions. Before fact discovery, parties have not yet identified the
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`relevant prior art to assert at trial, the relevant witnesses, the relevant third parties, or the relevant
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`evidence. Thus, in early motions to transfer, the Volkswagen factors drive parties to identify
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`witnesses and evidence based on location rather than relevance. Too frequently, such transfer-
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`driven speculation about the witnesses and evidence fails to align with reality. At trial, the parties
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`end up calling different witnesses, asserting different prior art, and presenting different evidence
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`from what they identify in their transfer briefs. Requiring venue discovery to precede fact
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`discovery also frequently leads to unnecessary disputes about whether certain discovery requests
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`fall into one bucket or the other. See, e.g., Discovery Order, LPP Combustion, LLC v. General
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`Electric Co., 6:21-CV-1343-ADA-DTG (W.D. Tex. May 13, 2022) ECF No. 34 (ruling on venue
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`discovery dispute). These types of disputes waste judicial resources—fact discovery will
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`eventually open and parties will have to turn over the evidence anyway, so disputing about whether
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`a request qualifies as “venue” discovery at most delays the production.
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`Thus, the Court finds it prudent to have the parties to re-brief the motion to transfer in
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`accordance with the appended schedule after the parties conduct fact discovery and determine
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`which witnesses and evidence they intend to call at trial. In other similarly situated cases, Apple
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`has assured this Court that it would not oppose a continuance when Apple presented new evidence,
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`and that a continuance would not affect the overall trajectory of this case because fact discovery
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`would commence regardless of whether a continuance is or is not granted.
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`D. Effects of the Revised Schedule
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`The scheduling order in Appendix A moves the completion of transfer motion briefing and
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`the Markman hearing until after the conclusion of fact discovery so that the parties can fully
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`uncover and identify all relevant parties and evidence instead of speculating about the same.
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`The parties are now required to narrow their asserted claims and prior art during the
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`discovery period. By narrowing the asserted prior art, the parties can determine which, if any, prior
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`art witnesses will actually attend trial rather than speculate about it. Defendants routinely
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`repeatedly abused the transfer factors by serving “cherry picked” initial invalidity contentions
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`happen to include a disproportionate amount of prior art listing inventors who reside in the
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`destination venue. See Fintiv, Inc. v. Apple Inc., No. 6:18-CV-00372-ADA, 2019 WL 4743678, at
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`*5 (W.D. Tex. Sept. 13, 2019) (“Fintiv accuses Apple of ‘cherry-picking’ prior art witnesses”).
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`The Federal Circuit found it error to disregard prior art witnesses, even though they are statistically
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`unlikely to testify at trial. In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *3 (Fed. Cir. Aug.
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`2, 2021). At this point, the Court is unable to peek into the future and accurately see which
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`witnesses will attend trial. Thus, to stop such cherry-picking gamesmanship and to give the Court
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`the facts needed to make a fair ruling, the Court is deferring its decision on this factor until the
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`parties have narrowed down their prior art contentions and identified the few prior artists who will
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`actually testify at trial.
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`Based on the same reasoning, the revised schedule requires the parties to exchange
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`preliminary witness lists at the close of discovery. The preliminary witness lists may be freely
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`amended in good faith so long as the amendments do not amount to transfer motion gamesmanship.
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`This benefits everyone by preventing the parties from speculating that certain witnesses have
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`relevant information based on keywords in Linked-In profiles, news articles, third-party reports,
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`and other possibly inaccurate hearsay.
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`Based on the same reasoning, the revised schedule requires the parties to exchange
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`preliminary exhibit lists at the close of discovery. The preliminary exhibit lists may be freely
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`amended in good faith so long as the amendments do not amount to transfer motion gamesmanship.
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`This Court has been plagued by transfer motions where parties guess at the volume of evidence or
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`fail to identify any evidence, preventing the Court from accurately determining which venue is
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`most convenient. Instead, parties routinely suggest that any evidence will be found alongside
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`custodians—thereby improperly double counting the location of witnesses in the transfer factors.
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`After the close of fact discovery, Plaintiff may file an opposition brief based on the facts
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`uncovered during discovery. Then, Defendant can file its reply brief, also including any evidence
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`uncovered during discovery. Plaintiff may then file a short sur-reply that responds to any new
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`evidence or argument Defendant raises on reply.
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`With a better evidentiary record after full fact discovery, the Court will then rule on the
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`transfer motion. Thereafter, the Court will hold the Markman hearing. As mandated by the Federal
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`Circuit, the Markman hearing will occur after the Court issues its transfer opinion. In re SK hynix
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`Inc., 835 F. App’x at 601. Expert reports and substantive motions are not due until even later in
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`the case. Per its usual practice, Court intends to hear and rule on any substantive motions at the
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`pretrial conference that will not take place until about a week before trial.
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`The revised schedule has the unfortunate effect of delaying the Markman hearing, which
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`prevents defendants from quickly reaching the first merit milestone in a patent case. But when a
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`defendant files a motion to transfer knowing that the OGP automatically imposes the burden of
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`venue discovery, the defendant values transfer more than cost-effectively reaching the Markman
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`hearing as the Court originally intended.
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`E. Historically, Apple has evaded venue discovery and supplied questionable evidence.
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`As a trial court, this Court handles many motions to transfer and is well-positioned to assess
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`the comparable credibility of parties and their witnesses. The Court expects parties to respond fully
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`to venue discovery requests and expects 30(b)(6) declarants to adequately investigate and prepare
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`for their deposition topics. When the Court has all relevant facts and evidence, it can rule on a
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`transfer motion. The Court compares the discovery and evidence provided by comparable high-
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`tech defendants to show how forthcoming they appear:
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`Meta (formerly Facebook) has demonstrated exceptional candor before this Court. Meta
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`routinely relies on declarations by Mr. Nicholas Wong to support transfer motions. This Court
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`found “the Declaration of Nicholas Wong to be credible and convincing. Mr. Wong carefully
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`investigated the underlying facts that form the basis of his knowledge, identified the basis of his
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`knowledge, made mostly clear and unqualified statements of fact, made statements consistent with
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`Defendants’ thoroughly prepared interrogatory responses, avoided making uninformed statements,
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`avoided testifying about topics that he lacks knowledge of, and mostly avoids using vague and
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`crafty language.” VoIP-Pal.com, Inc. v. Meta Platforms, Inc., No. 6:21-CV-00665-ADA, 2022
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`WL 2110696, at *3 (W.D. Tex. May 31, 2022) (hereinafter “Meta Case”). In support of its motion,
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`Meta supplied the Court with an interrogatory response identifying the name, location, team name,
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`and employment title of every employee in every group that the plaintiff contended was relevant
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`to the case. Meta Case at ECF No. 40-11 (sealed interrogatory response). Whatever investigation
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`Meta did, it was thorough—Meta found the relevant employees scattered in Texas, California, and
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`in other states. Meta had nothing to hide, and no opposing evidence contradicted Meta’s
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`representations to this Court. This Court transferred the case based on Meta’s candor and thorough
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`discovery response. Meta Case at *3.
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`Google routinely relies on Mr. Rope as a venue declarant. In a recent case, he filed a
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`declaration supporting a motion to transfer by Google, and the opposing party challenged Mr.
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`Rope’s credibility. Motion Offense, LLC v. Google LLC, No. 6:21-CV-00514-ADA, 2022 WL
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`3723303, at *2 (W.D. Tex. Aug. 29, 2022) (hereinafter “Google Case”). The Court found his
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`declaration acceptable but limited to certain products and types of employees. Id. “He conducted
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`a multi-day investigation, interviewed more than twenty individuals, and attempted to answer his
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`deposition questions directly rather than evasively. Although Mr. Rope received some information
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`from counsel and routinely received warnings not to divulge information from counsel, he
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`nonetheless conducted an independent investigation. His investigation uncovered evidence that
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`weighs against transfer, such as the witness . . . in Austin.” Id. (internal citations omitted). Mr.
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`Rope has time to investigate the facts because he performs these types of investigations for Google
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`as his full-time job. Id. The opposing party ultimately presented evidence of numerous types of
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`employees who worked on other accused products that Mr. Rope never identified, but this did not
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`contradict Mr. Rope’s testimony because Mr. Rope made clear that his declaration was limited
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`only to certain products and to certain types of employees. Id.
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`Apple has a history of evading its discovery obligations. In response to an interrogatory for
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`details about the location of its servers, Apple responded “the details regarding Apple’s servers are
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`wholly irrelevant to the issue of the convenience of venue under 28 U.S.C. § 1404(a), especially
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`given Apple has already represented that electronic documents concerning the Apple Products
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`reside on local servers located or accessible in or around NDCA.” Scramoge Tech. Ltd. v. Apple
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`Inc., No. 6:21-CV-00579-ADA (W.D. Tex. Mar. 22, 2022) ECF No. 67 at 4. The location of
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`Apple’s servers directly relates to the transfer factor about the convenience of evidence. When
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`compared to forthcoming defendants like Meta, the Court is left to wonder why Apple is hiding
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`such basic, relevant information.
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`The Court explained its concerns with Apple’s repeated use of Mr. Rollins as an unreliable
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`venue declarant in the Scramoge Case. Scramoge Tech. Ltd. v. Apple Inc., No. 6:21-CV-00579-
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`ADA, 2022 WL 1667561, at *2–4 (W.D. Tex. May 25, 2022) (“Scramoge Case”). At that time,
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`Scramoge was the only plaintiff to seriously challenge Mr. Rollins’s credibility. Id. at n.3. 1 Absent
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`opposition, the Court would routinely take Mr. Rollins at his word, and the Court will still
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`selectively take him at his word when he gives plain, unqualified, informed statements of fact.
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`To summarize the problems with Mr. Rollins, he appears to do little investigation into the
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`facts as a 30(b)(6) witness and instead serves as a mouthpiece for attorney argument. He works as
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`a full-time finance manager for Apple but somehow investigates more patent cases than full-time
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`experts. Id. at *2–3 (collecting just a fraction of Mr. Rollins’s declarations to show the
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`unreasonable quantity). He explains complex technologies despite not being qualified as an expert.
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`Id. He only vaguely describes what he does to prepare as a 30(b)(6) witness, leaving the Court to
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`assume that he merely reviews attorney-fed information instead of conducting a reasonable
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`investigation. Id. The Court has noticed the pattern of Mr. Rollins plainly declaring unqualified
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`facts that support transfer, but when he gives facts about topics that might weigh against transfer,
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`his statements suddenly become limited to his personal knowledge, suggesting that Mr. Rollins
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`does not do an equally confident investigation into facts that weigh against transfer. E.g., id. at *3–
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`4; see also Scramoge Case, ECF No. 81 at 6.
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`As a result of this Court’s opinion in the Scramoge Case, Apple sought to supplement Mr.
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`Rollins’s declarations in several pending cases, including the present case. See, e.g., ECF No. 99.
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`F. Deficiencies in the evidence prevent the Court from making an informed decision in this
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`case
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`In this case, the declaration and testimony by Mark Rollins is unreliable evidence because
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`it shares the deficiencies noted above. Given his full-time job as a financial manager at Apple, Mr.
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`1 Apple routinely seals the declarations of Mr. Rollins, so it is difficult for the public to access
`them.
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 11 of 19
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`Rollins lacks the time to properly investigate the accused products in this case. ECF No. 38-1 ¶¶
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`1, 6. Mr. Rollins needed to investigate an enormous amount of Apple products, including
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`numerous models of the AirPods, iPhone, HomePod, MacBook Pro, MacBook Air, iMac, iMac
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`Pro, and Beats products. Id. at ¶ 6. To find the witnesses and evidence related to these products,
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`Mr. Rollins spoke to just six people at Apple. Id. ¶¶ 9–12, 14–15. For comparison, Mr. Rope spoke
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`with over twenty people when investigating just four Google products. Google Case, ECF No. 35-
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`1 ¶ 5. It is unlikely that just six people at Apple can reliably inform Mr. Rollins about all the
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`witnesses and evidence related to the above products.
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`Mr. Rollins’s declaration again employs his usual crafty and qualifying language, such as
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`“To my knowledge, Apple does not have any unique working files or documents relevant to this
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`case located in WDTX.” ECF No. 38-1 ¶ 7 (emphasis added). This type of language suggests that
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`Mr. Rollins knows about redundant evidence in the WDTX or that such evidence may exist but is
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`not known to Mr. Rollins because he failed to investigate it. Also embedded in this statement is
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`Mr. Rollins’s determination of what is “relevant to this case.” Id. Mr. Rollins is wholly unqualified
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`to be making determinations of technological relevance in a patent case where the claims cover a
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`receiver, acoustic microphones, sensor, and processor configured to process acoustic signals in a
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`very particular way. ECF No. 1-1 at 16:3–29.
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`By failing to identify any relevant people in Texas, Mr. Rollins perpetuates the Court’s
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`concern that Apple is somehow crafting an overly narrow definitions of relevant technology or
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`otherwise avoiding its discovery obligations. The Court has no concern if an investigation finds
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`no one in Texas in an individual case—the concern arises only when companies with a large
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`presence in Texas repeatedly tell the Court that its employees don’t work on entire lines of products
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`without ever explaining what those employees work on. For comparison, comparable tech
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`companies like Meta and Google will, upon thoroughly investigating a major product, routinely
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`find some people or evidence in Texas. See, e.g. Meta Case at ECF No. 40-11 (sealed interrogatory
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`response identifying employees in Texas, California, and elsewhere). Even if the bulk of a team
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`works at a company’s headquarters in California, it is exceedingly likely in the modern, post-
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`COVID era that some employee works remotely from Texas or in its neighboring states, especially
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`in cases involving big tech companies. By diligent investigation, Meta and Google routinely find
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`these individuals and identify them during discovery. Mr. Rollins rarely does.
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`Apple has a campus of about 7,000 employees in Austin. ECF No. 29 at 7. Apple would
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`have the Court believe that none of those employees in Austin relate to this case where the accused
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`products cover numerous different Apple products, including numerous models of the AirPods,
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`iPhone, HomePod, MacBook Pro, MacBook Air, iMac, iMac Pro, and Beats products. Mr. Rollins
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`likely did not talk any Texas Apple employees and, across the numerous cases that he provided a
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`declaration in, has yet to explain what Apple’s 7,000 employees work on in Austin. In case after
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`case, Apple argues that no one in Austin works on whatever Apple product happens to be accused,
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`ultimately giving the Court the cumulative, puzzling, and unbelievable impression that there are
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`no Apple products left for these 7,000 employees to work on.
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`G. The revised schedule is fairest for everyone
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`The Court is left with the decision of how to rule on Apple’s venue motion when Apple’s
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`primary venue declaration about the “relevant” employees and evidence comes from a declarant
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`who is repeatedly unreliable. The Court will not allow a defendant to benefit from delaying the
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`case schedule and extend venue discovery by using an incompetent witness. At the same time, the
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`Court is reluctant to strike Mr. Rollins’s declaration without giving Apple a chance to fix the issues.
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 13 of 19
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`The Court wants the parties to specifically identify the relevant evidence and witnesses rather than
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`speculate about them.
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`The fairest process for everyone is to proceed according to the amended schedule attached
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`as Appendix A. By completing discovery, the parties can present the Court with the relevant
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`evidence and witnesses instead of the parties’ speculations about relevant evidence and witnesses.
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`Otherwise, the Court would be inclined to assume that Apple is being evasive and make adverse
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`inferences against Apple. Apple has been harmed by this Court’s inaccurate determinations in the
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`past. See, e.g., Koss Corp. v. Apple Inc., No. 6-20-CV-00665-ADA, 2021 WL 5316453, at *6
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`(W.D. Tex. Apr. 22, 2021) (inaccurately determining the relevance of a witness against Apple’s
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`favor because the Court lacked the benefit of the parties’ witness lists). Under the amended
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`schedule, both parties will have a fair opportunity to file new replacement briefs, present new
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`evidence, and make new arguments.
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`Reopening venue discovery would waste resources because at this point, reopened venue
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`discovery is likely to substantially overlap with fact discovery. The parties will be asking each
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`other to turn over the actual evidence and depose witnesses about their knowledge and relevance
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`to support the transfer factor analysis.
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`H. CONCLUSION
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`Apple’s venue declarant has provided such unreliable evidence that the Court cannot
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`accurately rule on the motion to transfer. The Court finds it prudent to have the parties engage in
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`additional discovery before re-briefing the motion to transfer in accordance with the appended
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`schedule. IT IS HEREBY ORDERED that:
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`1) Full fact discovery is now open.
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 14 of 19
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`2) Apple’s Motion for Leave, ECF No. 99, is GRANTED-IN-PART. Apple may file any
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`new arguments and evidence in accordance with the new schedule.
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`3) All other scheduled deadlines are vacated.
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`4) The parties shall meet and confer to file a joint motion to enter a scheduling order for
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`replacement briefing based on the appended schedule within two weeks.
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`SIGNED this 5th day of October, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 15 of 19
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`APPENDIX A – EXEMPLARY SCHEDULE
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`Deadline
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`Item
`
`8 weeks after receiving or
`waiving service of
`complaint or 3 weeks after
`the CMC, whichever is
`later.
`
`7 days before CMC
`
`2 weeks after CMC
`
`7 weeks after CMC
`
`Deadline to file a motion for inter-district transfer. After this
`deadline, movants must seek leave of Court and show good
`cause for the delay.
`
`Plaintiff serves preliminary 2 infringement contentions in the
`form of a chart setting forth where in the accused product(s)
`each element of the asserted claim(s) are found. Plaintiff shall
`also identify the earliest priority date (i.e. the earliest date of
`invention) for each asserted claim and produce: (1) all
`documents evidencing conception and reduction to practice
`for each claimed invention, and (2) a copy of the file history
`for each patent in suit.
`
`The Parties shall file a motion to enter an agreed Scheduling
`Order. If the parties cannot agree, the parties shall submit a
`separate Joint Motion for entry of Scheduling Order briefly
`setting forth their respective positions on items where they
`cannot agree. Absent agreement of the parties, the Plaintiff
`shall be responsible for the timely submission of this and other
`Joint filings.
`
`Defendant serves preliminary invalidity contentions in the
`form of (1) a chart setting forth where in the prior art
`references each element of the asserted claim(s) are found, (2)
`an identification of any limitations the Defendant contends are
`indefinite or lack written description under section 112, and
`(3) an identification of any claims the Defendant contends are
`directed to ineligible subject matter under section 101.
`Defendant shall also produce (1) all prior art referenced in the
`invalidity contentions, and (2) technical documents, including
`software where applicable, sufficient to show the operation of
`the accused product(s).
`
`9 weeks after CMC
`
`Parties exchange claim terms for construction.
`
`
`2 The parties may amend preliminary infringement contentions and preliminary invalidity contentions without leave
`of court so long as counsel certifies that it undertook reasonable efforts to prepare its preliminary contentions and the
`amendment is based on material identified after those preliminary contentions were served and should do so
`seasonably upon identifying any such material. Any amendment to add patent claims requires leave of court so that
`the Court can address any scheduling issues.
`
`
`
`15
`
`

`

`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 16 of 19
`
`11 weeks after CMC
`
`Parties exchange proposed claim constructions.
`
`12 weeks after CMC
`
`13 weeks after CMC
`
`14 weeks after CMC
`
`Parties disclose extrinsic evidence. The parties shall disclose
`any extrinsic evidence, including the identity of any expert
`witness they may rely upon with respect to claim construction
`or indefiniteness. With respect to any expert identified, the
`parties shall identify the scope of the topics for the witness’s
`expected testimony.3 With respect to items of extrinsic
`evidence, the parties shall identify each such item by
`production number or produce a copy of any such item if not
`previously produced.
`
`Deadline to meet and confer to narrow terms in dispute and
`exchange revised list of terms/constructions.
`
`Defendant files Opening claim construction brief, including
`any arguments that any claim terms are indefinite.
`
`17 weeks after CMC
`
`Plaintiff files Responsive claim construction brief.
`
`19 weeks after CMC
`
`Defendant files Reply claim construction brief.
`
`19 weeks after CMC
`
`Parties to jointly email the law clerks (see OGP at 1) to
`confirm their Markman date and to notify if any venue or
`jurisdictional motions remain unripe for resolution.
`
`21 weeks after CMC
`
`Plaintiff files a Sur-Reply claim construction brief.
`
`3 business days after
`submission of sur-reply
`
`Parties submit Joint Claim Construction Statement and email
`the law clerks an editable copy.
`
`See General Issues Note #7 regarding providing copies of the
`briefing to the Court and the technical advisor (if appointed).
`
`Parties submit optional technical tutorials to the Court and
`technical advisor (if appointed).
`
`Markman Hearing at 9:00 a.m. This date is a placeholder and
`the Court may adjust this date as the Markman hearing
`approaches.
`
`22 weeks after CMC (but
`at least 10 days before
`Markman hearing)
`
`23 weeks after CMC (or as
`soon as practicable) 4
`
`---DELAYED---
`
`
`3 Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by the other party.
`4 All deadlines hereafter follow the original Markman hearing date and do not change if the Court delays the Markman
`hearing.
`
`
`
`16
`
`

`

`Case 6:21-cv-00984-ADA Document 103 Filed 10/05/22 Page 17 of 19
`
`The Markman hearing is