St Clair Intellectual Property Consultants Inc. v. Apple Inc.
Filing
46
PROPOSED ORDER Amended Rule 16 Scheduling Order re 12 Scheduling Order, by St Clair Intellectual Property Consultants Inc.. (McGonigle, Patricia)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
ST. CLAIR INTELLECTUAL PROPERTY
CONSULTANTS, INC.,
Plaintiff,
v.
Civil Action No. 09-804-LPS
APPLE INC.,
Defendant.
AMENDED RULE 16 SCHEDULING ORDER
This __ day of _______, 2011, the Court having conducted a Rule 16 scheduling and
planning conference pursuant to Local Rule 16.2(a) and the parties having determined after
discussion that the matter cannot be resolved at this juncture by settlement, voluntary mediation,
or binding arbitration;
IT IS ORDERED that:
1.
Rule 26(a)(1) Initial Disclosures and E-Discovery Default Standard. The Parties
previously made their initial disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1).
The Parties have previously agreed to the following procedures regarding discovery of electronic
documents:
(a)
Electronic File Search. Each party may use reasonable keyword searching
to identify electronic documents reasonably like to have discoverable information regarding the
subject matter of this lawsuit. The requesting party may provide ESI search terms to the
producing party to use in the keyword searching by the producing party. Should a producing
party object to a keyword provided by the requesting party the parties shall meet and confer
concerning the objection.
(b)
Form of Production of Electronic Documents.
The parties anticipate
producing most documents in an electronic format such as PDF or TIFF files with a load file –
specifically a form that preserves the page breaks between documents and otherwise allows
separate documents to be identified. The parties further agree that the parties do not need to
perform optical character recognition (OCR) on the electronically produced files prior to their
production. The parties also reserve the right to produce certain documents in their native format
and will meet and confer regarding such production as necessary and appropriate.
(c)
The Parties recognize that the use of routine file copy procedures may
alter certain metadata, but the Parties agree that each will take reasonable steps to preserve the
metadata for ESI that is produced in native format but that extraordinary steps (e.g., forensic
imaging) are not required. The parties agree that neither will seek the discovery of voicemail
without showing good cause.
(d)
The Parties agree that as long as responsive documents are available and
accessible via other means, neither will seek discovery of materials retained in tape, floppy disk,
optical disk, or similar formats primarily for back-up or disaster recovery purposes. The Parties
further agree that as long as responsive documents are available and accessible via other means,
neither will seek the discovery of archives stored on computer servers, external hard drives,
notebooks, or personal computer hard drives that are created for disaster recovery purposes and
not used as reference materials in the normal course of a Party's business operations. The Parties
further agree that neither Party need deviate from the practices it normally exercises with regard
to preservation of such tape, floppy disk, optical disk, or similar formats primarily for back-up or
disaster recovery purposes when not in anticipation of litigation (e.g., recycling of back-up tapes
is permitted).
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(e)
The Parties agree that if responsive documents are located on a centralized
server or network, the producing Party shall not be required to search for additional substantially
the same copies of such responsive documents (where differences are not in the content of the
documents) that may be located on the personal computer, or otherwise in the possession, of
individual employees absent a showing of good cause that the production of such additional
substantially the same copies is necessary. The Parties will meet and confer to discuss the
parameters of the search and production of any such documents. The Parties further agree in this
regard, however, that neither Party need deviate from the practices it normally exercises with
regard to the preservation of such additional copies when no in anticipation of litigation (e.g.,
recycling of back-up tapes is permitted).
(f)
The Parties agree to meet and confer on the protocol for the search and
production of e-mail in response to discovery requests. If the parties cannot reach an agreement
within sixty (60) days of this order, the parties will seek the Court’s assistance.
2.
Joinder of Other Parties and Amendment to Pleadings. All motions to join other
parties , and to amend or supplement the pleadings, shall be filed on or before October 31, 2011.
3.
Discovery. Unless otherwise ordered by the Court, the limitations on discovery
set forth in Local Rule 26.1 shall be strictly observed.
a.
Discovery Cut Off. All discovery in this case shall be initiated so that it
will be completed on or before October 8, 2012.
b.
Document Production. Production of technical documents concerning the
operation and functionality of the accused products shall, to the extent reasonably
possible, be substantially complete by October 1, 2011. Production of all documents
shall be substantially complete by November 30, 2011.
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c.
Requests for Admission. A maximum of 25 requests for admission are
permitted for each side. Notwithstanding the foregoing, there is no limitation on the
number of requests for admission that a document is (i) authentic; (ii) is a business
record; or (iii) otherwise meets a condition for admissibility in evidence.
d.
Interrogatories.
i.
A
maximum
of
25
interrogatories,
including
contention
interrogatories, are permitted for each side.
ii.
The Court encourages the parties to serve and respond to
contention interrogatories early in the case. In the absence of agreement among the
parties, contention interrogatories, if filed, shall first be addressed by the party with the
burden of proof. The adequacy of all interrogatory answers shall be judged by the level
of detail each party provides; i.e., the more detail a party provides, the more detail a party
shall receive.
e.
Depositions.
i.
Limitation on Hours for Deposition Discovery.
Each side is
limited to a total of 50 hours of taking testimony by deposition upon oral examination, including
fact, third-party and Rule 30(b)(6) witnesses (but excluding expert witness depositions). All
depositions shall be limited to seven (7) hours, with the exception of 30(b)(6) depositions which
will be limited to seven (7) hours per witness.
ii.
Location of Depositions. Any party or representative (officer,
director, or managing agent) of a party filing a civil action in this district court must ordinarily be
required, upon request, to submit to a deposition at a mutually convenient place. Exceptions to
this general rule may be made by order of the Court. A defendant who becomes a
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counterclaimant, cross-claimant, or third-party plaintiff shall be considered as having filed an
action in this Court for the purpose of this provision.
f.
Disclosure of Expert Testimony.
i.
Expert Reports. For the party who has the initial burden of proof on the
subject matter, the initial Federal Rule 26(a)(2) disclosure of expert testimony is due on or before
forty-five (45) days after the issuance of the Court’s Markman decision. The supplemental
disclosure to contradict or rebut evidence on the same matter identified by another party is due
forty-five (45) days after receipt of the opening expert reports . Reply expert reports from the
party with the initial burden of proof are due on or before thirty (30) days after receipt of the
supplemental disclosure to contradict or rebut evidence on the same matter identified by another
party. No other expert reports will be permitted without either the consent of all parties or leave
of the Court. Along with the submissions of the expert reports, the parties shall advise of the
dates and times of their experts’ availability for deposition.
ii.
Objections to Expert Testimony. To the extent any objection to
expert testimony is made pursuant to the principles announced in Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579 (1993), as incorporated in Federal Rule of Evidence 702, it shall be
made by motion no later than the deadline for dispositive motions set forth herein, unless
otherwise ordered by the Court.
g.
Discovery Matters and Disputes Relating to Protective Orders. Should counsel
find they are unable to resolve a discovery matter or a dispute relating to a protective order, the
parties involved in the discovery matter or protective order dispute shall contact chambers at
(302) 573-4571 to schedule a telephone conference. On a date to be set by separate order, but not
less than forty-eight (48) hours prior to the conference, the party seeking relief shall file with the
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Court a letter, not to exceed three (3) pages, outlining the issues in dispute and its position on
those issues. On a date to be set by separate order, but not less than twenty-four (24) hours prior
to the conference, any party opposing the application for relief may file a letter, not to exceed
three (3) pages, outlining that party’s reasons for its opposition. Should any document(s) be filed
under seal, a courtesy copy of the sealed document(s) must be provided to the Court within one
(1) hour of e-filing the document(s). Should the Court find further briefing necessary upon
conclusion of the telephone conference, the Court will order it. Alternatively, the Court may
choose to resolve the dispute prior to the telephone conference and will, in that event, cancel the
conference.
If a discovery related motion is filed without leave of the Court, it will be denied without
prejudice to the moving party’s right to bring the dispute to the Court through the discovery
matters procedures set forth in this Order.
BIFURCATION IS DISPUTED:
h.
Bifurcation of Discovery and Trial.
DEFENDANT’S PROPOSAL:
Damages, willfulness, and inequitable conduct shall be bifurcated for purposes of
discovery, amendment of the pleadings, and trial until after trial of all the liability issues, at
which time an appropriate schedule will be addressed by the Court.
DEFENDANT’S POSITION: Defendant seeks to keep this provision previously agreed
to by the Parties and entered by the Court in the Rule 16 Scheduling Order governing this
litigation on March 2, 2010 (D.I. 12, at ¶ 14).
PLAINTIFF’S POSITION:
Plaintiff opposes any bifurcation in this case.
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4.
Application to Court for Protective Order. On May 13, 2010 (D.I. 32), the Court
entered Defendant’s proposed Protective Order Regarding The Disclosure And Use Of
Discovery Materials (D.I. 28, Ex.2.).
5.
Papers Filed Under Seal. When filing papers under seal, counsel shall deliver to
the Clerk an original and one (1) copy of the papers. In accordance with section G of the
Administrative Procedures Governing Filing and Service by Electronic Means, a redacted
version of any sealed document shall be filed electronically within seven (7) days of the filing of
the sealed document.
6.
Courtesy Copies. The parties shall provide to the Court two (2) courtesy copies
of all briefs and one (1) courtesy copy of any other document filed in support of any briefs (i.e.,
appendices, exhibits, declarations, affidavits etc.). This provision also applies to papers filed
under seal.
7.
ADR Process. This matter is referred to a magistrate judge to explore the
possibility of alternative dispute resolution.
8.
Interim Status Report. On October 10, 2011, counsel shall submit a joint letter to
the Court with an interim report on the nature of the matters in issue and the progress of
discovery to date.
Thereafter, if the Court deems it necessary, it will schedule a status
conference.
9.
Tutorial Describing the Technology and Matters in Issue. The parties shall each
present a technology tutorial to the Court on _________________, 201_, which shall be recorded
for the Court.
10.
Claim Construction Issue Identification. If the Court does not find that a limited
earlier claim construction would be helpful in resolving the case, on March 6, 2012, the parties
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shall exchange a list of those claim term(s)/phrase(s) that they believe need construction and
their proposed claim construction of those term(s)/phrase(s). This document will not be filed
with the Court. Subsequent to exchanging that list, the parties will meet and confer to prepare a
Joint Claim Construction Chart to be submitted on March 20, 2012. The parties’ Joint Claim
Construction Chart should identify for the Court the term(s)/phrase(s) of the claim(s) in issue,
and should include each party’s proposed construction of the disputed claim language with
citation(s) only to the intrinsic evidence in support of their respective proposed constructions. A
copy of the patent(s) in issue as well as those portions of the intrinsic record relied upon shall be
submitted with this Joint Claim Construction Chart. In this joint submission, the parties shall not
provide argument.
11.
Claim Construction Briefing. The parties shall contemporaneously submit initial
briefs on claim construction issues on April 6, 2012. The parties’ answering/responsive briefs
shall be contemporaneously submitted on May 8, 2012. No reply briefs or supplemental papers
on claim construction shall be submitted without leave of the Court. Local Rule 7.1.3(4) shall
control the page limitation for initial (opening) and responsive (answering) briefs.
12.
Hearing on Claim Construction. Beginning at _____ _.m. on ___________, 201_,
the Court will hear argument on claim construction. The parties shall notify the Court, by joint
letter submission, no later than the date on which their answering claim construction briefs are
due: (i) whether they request leave to present testimony at the hearing; and (ii) the amount of
time they are requesting be allocated to them for the hearing.
13.
Reliance On Advice of Counsel. Defendant shall disclose to Plaintiff any advice
of counsel that it may rely upon as a defense to willful infringement no later than fifty (50) days
after the Court issues its claim construction ruling.
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14.
Case Dispositive Motions. All case dispositive motions, an opening brief, and
affidavits, if any, in support of the motion shall be served and filed on or before _________,
201_ [a date approximately four months prior to the pretrial conference]. Briefing will be
presented pursuant to the Court’s Local Rules. No case dispositive motion under Rule 56 may
be filed more than ten (10) days before the above date without leave of the Court.
15.
Applications by Motion. Except as otherwise specified herein, any application to
the Court shall be by written motion filed with the Clerk. Any non-dispositive motion should
contain the statement required by Local Rule 7.1.1.
16.
Pretrial Conference.
On ________, 201_, the Court will hold a pretrial
conference in Court with counsel beginning at _____ _.m. Unless otherwise ordered by the
Court, the parties should assume that filing the pretrial order satisfies the pretrial disclosure
requirement of Federal Rule of Civil Procedure 26(a)(3). The parties shall file with the Court the
joint proposed final pretrial order with the information required by the form of Final Pretrial
Order which accompanies this Scheduling Order on or before ________, 201_. Unless otherwise
ordered by the Court, the parties shall comply with the timeframes set forth in Local Rule
16.3(d)(1)-(3) for the preparation of the joint proposed final pretrial order. The Court will advise
the parties at or before the above-scheduled pretrial conference whether an additional pretrial
conference will be necessary.
17.
Motions in Limine. Motions in limine shall not be separately filed. All in limine
requests and responses thereto shall be set forth in the proposed pretrial order. Each party shall
be limited to three (3) in limine requests, unless otherwise permitted by the Court. The in Limine
request and any response shall contain the authorities relied upon; each in limine request may be
supported by a maximum of three (3) pages of argument and may be opposed by a maximum of
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three (3) pages of argument, and the party making the in limine request may add a maximum of
one (1) additional page in reply in support of its request. If more than one party is supporting or
opposing an in limine request, such support or opposition shall be combined in a single three (3)
page submission (and, if the moving party, a single one (1) page reply), unless otherwise ordered
by the Court. No separate briefing shall be submitted on in limine requests, unless otherwise
permitted by the Court.
18.
Jury Instructions, Voir Dire, and Special Verdict Forms. Where a case is to be
tried to a jury, pursuant to Local Rules 47 and 51 the parties should file (i) proposed voir dire,
(ii) preliminary jury instructions, (iii) final jury instructions, and (iv) special verdict forms three
(3) full business days before the final pretrial conference. This submission shall be accompanied
by a computer diskette containing each of the foregoing four (4) documents in WordPerfect
format.
19.
Trial. This matter is scheduled for a __ day ____ trial beginning at 9:30 a.m. on
_________, 201_, with the subsequent trial days beginning at 9:00 a.m. Until the case is
submitted to the jury for deliberations, the jury will be excused each day at 4:30 p.m. The trial
will be timed, as counsel will be allocated a total number of hours in which to present their
respective cases.
_________________________________
UNITED STATES DISTRICT JUDGE
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