Vertical Computer Systems, Inc. v. Interwoven, Inc. et al

Filing 67

DISCOVERY ORDER. Signed by Judge David Folsom on 11/3/11. (ehs, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
VERTICAL COMPUTER SYSTEMS, INC.,
Plaintiff,
v.
LG ELECTRONICS MOBILECOMM
U.S.A., INC., LG ELECTRONICS
INC., SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS
AMERICA, INC.,
Defendants.

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§ Civil Action No. 2:10-cv-490
§
§ Hon. David Folsom
§
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§ JURY TRIAL DEMANDED
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§
§
§

DISCOVERY ORDER
After a review of the pleaded claims and defenses in this action, in furtherance of the
management of the court’s docket under Fed. R. Civ. P. 16, and after receiving the input of the
parties to this action, it is ORDERED AS FOLLOWS:
1.

Disclosures. Except as provided by paragraph 1(h), and, to the extent not already
disclosed, by the date specified in the Docket Control Order, each party shall
disclose to every other party the following information:
(a)

the correct names of the parties to the lawsuit;

(b)

the name, address, and telephone number of any potential parties;

(c)

the legal theories and, in general, the factual bases of the disclosing party’s
claims or defenses (the disclosing party need not marshal all evidence that
may be offered at trial);

(d)

the name, address, and telephone number of persons having knowledge of
relevant facts, a brief statement of each identified person’s connection
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with the case, and a brief, fair summary of the substance of the
information known by any such person;
(e)

any indemnity and insuring agreements under which any person or entity
carrying on an insurance business may be liable to satisfy part or all of a
judgment entered in this action or to indemnify or reimburse for payments
made to satisfy the judgment;

(f)

any settlement agreements related to the patents in suit;

(g)

any statement of any party to the litigation;

(h)

for any testifying expert, by the date set by the court in the Docket Control
Order, each party shall disclose to the other party or parties:
a.

the expert’s name, address, and telephone number;

b.

the subject matter on which the expert will testify;

c.

if the witness is retained or specially employed to provide expert
testimony in the case or whose duties as an employee of the
disclosing party regularly involve giving expert testimony:
(a)

subject to Fed. R. Civ. P. 26(b)(4)(c), all documents,
tangible things, reports, models, or data compilations that
have been provided to, reviewed by, prepared by or for the
expert in anticipation of the expert’s testimony; and

(b)

the disclosures required by Fed. R. Civ. P. 26(a)(2)(B) and
Local Rule CV-26.

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d.

for all other experts, the general substance of the expert’s mental
impressions and opinions and a brief summary of the basis for
them or documents reflecting such information;

2.

Additional Disclosures. Each party, without awaiting a discovery request, shall
provide, to the extent not already provided, to every other party, the disclosures
required by the Patent Rules for the Eastern District of Texas;

3.

Email Discovery: Email production requests shall be phased to occur after the
parties have exchanged initial disclosures and basic documentation about the
patents, the prior art, the accused instrumentalities, and the relevant finances.
While this provision does not require the production of such information, the
Court encourages prompt and early production of this information to promote
efficient and economical streamlining of the case.
(a) General ESI production requests under Federal Rules of Civil Procedure 34
and 45 shall not include email or other forms of electronic correspondence
(collectively “email”). To obtain email parties must propound specific email
production requests.
(b) Email production requests shall only be propounded for specific issues, rather
than general discovery of a product or business.

4.

Discovery Limitations. The discovery in this cause is limited to the disclosures
described in Paragraphs 1 and 3 and the following:
The parties have agreed that each party shall be limited to 25 interrogatories and
75 requests for admission (excluding requests for authentication) for each
opposing party. Depositions shall be limited as follows: each side is allowed

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(1)

100 hours total of deposition time on fact witnesses for each opposing
party (with the parties agree to accommodate reasonable requests for more
time if additional time is warranted),

(2)

for each declaration or report submitted by an expert witness, one day of 7
hours of deposition time to depose the expert witness with regard to that
declaration or report, except if a single expert provides opinions
concerning the infringement/non-infringement of the products of more
than one Defendant group, then that expert may be deposed for 7 (seven)
hours per Defendant group about whose products the expert opines on
(with the parties agreeing to accommodate reasonable requests for more
time if additional time is warranted),

(3)

one day of 7 hours of deposition time for each 30(b)(6) designee, and

(4)

14 hours of deposition time for the named inventor of the '744 and '629
patents. The parties reserve the right to seek protection from giving a
deposition, if necessary.

(5)

The deposition of the named inventor and 30(b)(6) witnesses shall count
against the 100 hour limit agreed to above, whereas the deposition of
expert witnesses shall not.

(6)

Depositions taken by any defendant of any other defendant (or its party
fact witnesses) shall not count toward the 100 hour limit agreed to above.

(7)

With the exception of the foregoing limitations on inventor depositions,
the parties agree that, pursuant to Fed. R. Civ. P. 30(d)(1), unless
otherwise stipulated or ordered by the Court, the deposition of an

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individual fact witness is limited to one day of 7 hours of deposition time,
provided that the Court may allow additional time consistent with Fed. R.
Civ. P. 26(b)(2) if needed to fairly examine the deponent or if the
deponent, another person, or any other circumstance impedes or delays the
examination.
5.

Form of Document Production.

Documents and electronically stored

information shall be produced electronically (e.g., on compact discs) in an imaged
format (e.g., TIFF), with load files. With respect to Plaintiff, Defendants agree to
produce single page TIFFs with Summation and Concordance Opticon load files
and OCR text. With respect to Defendants, Plaintiff agrees to produce single
page TIFFs with Summation and Concordance Opticon load files and OCR text.
Electronically stored information need not be produced in native format (or any
format other than images as described above), and metadata need not be
produced.

To the extent either party believes, on a case-by-case basis, that

documents should be produced in an alternative format, or that metadata should
be produced, the parties have agreed that they will meet and confer in good faith
concerning such alternative production arrangements. The parties have further
agreed that they will meet and confer in good faith to ensure that the format of
each party’s production is compatible with the technical requirements of the
receiving party’s document management system.
6.

Expert Discovery. Testifying experts shall not be subject to discovery on any
draft of their reports in this case, and such draft reports, notes, outlines, or any
other writings leading up to an issued report(s) in this litigation, all

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communications to and from a testifying expert, and all materials generated by a
testifying expert with respect to that person’s work in this case are exempt from
discovery, unless those materials are relied upon by the expert in forming any
opinions in this litigation. No discovery can be taken from any consulting expert
except to the extent that consulting expert has provided information, opinions, or
other materials to a testifying expert, who then relies upon such information,
opinions, or other materials in forming his or her final report, trial or deposition
testimony, or any opinion in this case. Materials, communications, and other
information exempt from discovery under this Paragraph shall be treated as
attorney work product for the purposes of this litigation.

Nothing in this

Paragraph shall be construed to bar discovery from Plaintiff or Defendants,
provided however that their communications with testifying and/or consulting
experts will be treated in accordance with this Paragraph.

Nothing in this

Paragraph shall be construed to be inconsistent with the Federal Rules of Civil
Procedure.
7.

Privileged Information. There is no duty to disclose privileged documents or
information. By the date specified in the Docket Control Order, the parties shall
exchange privilege logs identifying the documents or information and the basis
for any disputed claim of privilege in a manner that, without revealing
information itself privileged or protected, will enable the other parties to assess
the applicability of the privilege or protection. No party shall be required to
identify on its respective privilege log any document or communication dated on
or after the filing of the lawsuit which, absent this provision, the party would have

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been obligated to so identify on said privilege log. Any party may move the court
for an order compelling the production of any documents or information
identified on any other party’s privilege log. If such a motion is made, the party
asserting privilege shall respond to the motion within the time period provided by
Local Rule CV-7. The party asserting privilege shall then file with the Court
within 30 days of the filing of the motion to compel any proof in the form of
declarations or affidavits to support their assertions of privilege, along with the
documents over which privilege is asserted for in camera inspection.
8.

Pre-trial disclosures. Each party shall provide to every other party regarding the
evidence that the disclosing party may present at trial as follows:
(a)

The name and, if not previously provided, the address and telephone
number, of each witness, separately identifying those whom the party
expects to present at trial and those whom the party may call if the need
arises.

(b)

The designation of those witnesses whose testimony is expected to be
presented by means of a deposition and, if not taken stenographically, a
transcript of the pertinent portions of the deposition testimony.

(c)

An appropriate identification of each document or other exhibit, including
summaries of other evidence, separately identifying those which the party
expects to offer and those which the party may offer if the need arises.

Unless otherwise directed by the court, these disclosures shall be made at least 30 days
before trial. Within 14 days thereafter, unless a different time is specified by the court, a party
may serve and file a list disclosing (1) any objections to the use under Rule 32(a) of a deposition

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designated by another party under subparagraph (B), and (2) any objections, together with the
grounds therefor, that may be made to the admissibility of materials identified under
subparagraph (c). Objections not so disclosed, other than objections under Rules 402 and 403 of
the Federal Rules of Evidence, shall be deemed waived unless excused by the court for good
cause shown.
9.

Signature. The disclosures required by this order shall be made in writing and
signed by the party or counsel and shall constitute a certification that, to the best
of the signer’s knowledge, information and belief, such disclosure is complete and
correct as of the time it is made.

If feasible, counsel shall meet to exchange

disclosures required by this order; otherwise, such disclosures shall be served as
provided by Fed. R. Civ. P. 5. The parties shall promptly file a notice with the
court that the disclosures required under this order have taken place.
10.

Duty to Supplement. After disclosure is made pursuant to this order, each party
is under a duty to supplement or correct its disclosures immediately if the party
obtains information on the basis of which it knows that the information disclosed
was either incomplete or incorrect when made, or is no longer complete or true.

11.

Disputes.
(a)

Except in cases involving claims of privilege, any party entitled to receive
disclosures may, after the deadline for making disclosures, serve upon a
party required to make disclosures a written statement, in letter form or
otherwise, of any reason why the party entitled to receive disclosures
believes that the disclosures are insufficient. The written statement shall
list, by category, the items the party entitled to receive disclosures

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contends should be produced. The parties shall promptly meet and confer.
If the parties are unable to resolve their dispute, then the party required to
make disclosures shall, within 14 days after service of the written
statement upon it, serve upon the party entitled to receive disclosures a
written statement, in letter form or otherwise, which identifies (1) the
requested items that will be disclosed, if any, and (2) the reasons why any
requested items will not be disclosed.

The party entitled to receive

disclosures may thereafter file a motion to compel.
(b)

Counsel are directed to contact the chambers of the undersigned for any
“hot-line” disputes before contacting the Discovery Hotline provided by
Local Rule CV-26(e). If the undersigned is not available, the parties shall
proceed in accordance with Local Rule CV-26(e).

12.

No Excuses. A party is not excused from the requirements of this Discovery
Order because it has not fully completed its investigation of the case, or because it
challenges the sufficiency of another party’s disclosures, or because another party
has not made its disclosures. Absent court order to the contrary, a party is not
excused from disclosure because there are pending motions to dismiss, to remand
or to change venue.

.
13.

Filings. Only upon request from chambers shall counsel submit to the court
courtesy copies of any filings.

IT IS SO ORDERED.

SIGNED this 3rd day of November, 2011.

____________________________________
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DAVID FOLSOM
UNITED STATES DISTRICT JUDGE