Rockstar Consortium US LP et al v. Google Inc

Filing 69

DISCOVERY ORDER. Signed by Magistrate Judge Roy S. Payne on 5/12/2014. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ROCKSTAR CONSORTIUM US LP
AND NETSTAR TECHNOLOGIES
LLC

Case No. 2:13-cv-00893-JRG-RSP

Plaintiffs,
JURY TRIAL DEMANDED
v.
GOOGLE INC.
Defendant.

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 Federal Rule of Civil Procedure 16, and after
receiving the input of the parties to this action, it is ORDERED AS FOLLOWS:
1.

Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
Procedure 26(a)(1), 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 with

01980.00010/5886970.3

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)
(g)
2.

any settlement agreements relevant to the subject matter of this action; and
any statement of any party to the litigation.

Disclosure of Expert Testimony. A party must disclose to the other parties the
identity of any witness it may use at trial to present evidence under Federal Rule of
Evidence 702, 703 or 705, and:
(a)

if the witness is one retained or specially employed to provide expert
testimony in the case or one whose duties as the party’s employee regularly
involve giving expert testimony, provide the disclosures required by
Federal Rule of Civil Procedure 26(a)(2)(B) and Local Rule CV-26; and

(b)

for all other such witnesses, provide the disclosure required by Federal Rule
of Civil Procedure 26(a)(2)(C).

3.

Additional Disclosures. Without awaiting a discovery request,1 each party will
make the following disclosures to every other party:
(a)

provide the disclosures required by the Patent Rules for the Eastern District
of Texas with the following modifications to P.R. 3-1 and P.R. 3-3:

1

The Court anticipates that this disclosure requirement will obviate the need for requests for

production.

01980.00010/5886970.3

P.R. 3-1(g): If a party claiming patent infringement asserts
that a claim element is a software limitation, the party need
not comply with P.R. 3-1 for those claim elements until 30
days after source code for each Accused Instrumentality is
produced by the opposing party. Thereafter, the party
claiming patent infringement shall identify, on an
element-by-element basis for each asserted claim, what
source code of each Accused Instrumentality allegedly
satisfies the software limitations of the asserted claim
elements.
P.R. 3-3(e): If a party claiming patent infringement
exercises the provisions of P.R. 3-1(g), the party opposing a
claim of patent infringement may serve, not later than 30
days after receipt of a P.R. 3-1(g) disclosure, supplemental
“Invalidity Contentions” that amend only those claim
elements identified as software limitations by the party
claiming patent infringement.
(b)

produce or permit the inspection of all documents, electronically stored
information, and tangible things in the possession, custody, or control of the
party that are relevant to the pleaded claims or defenses involved in this
action, except to the extent these disclosures are affected by the time limits
set forth in the Patent Rules for the Eastern District of Texas; and

(c)

provide a complete computation of any category of damages claimed by
any party to the action, and produce or permit the inspection of documents
or other evidentiary material on which such computation is based, including
materials bearing on the nature and extent of injuries suffered, except that
the disclosure of the computation of damages may be deferred until the time
for Expert Disclosures if a party will rely on a damages expert.

4.

Protective Orders. The Court will enter the parties’ Agreed Protective Order.

5.

Discovery Limitations. The discovery in this cause is limited to the disclosures
described in Paragraphs 1-3 together with: 30 interrogatories per side, 40 requests

01980.00010/5886970.3

for admissions per side (excluding requests solely for authentication of documents,
which shall be unlimited), the fact depositions of the parties and third parties, as
many document subpoenas of third parties as needed, five expert witnesses per
side, and 145 hours per side for depositions of fact witnesses. Depositions of expert
witnesses shall not count toward this 145-hour limit. “Side” means a party or a
group of parties with a common interest. All individual depositions shall be limited
to seven hours in accordance with the Federal Rules of Civil Procedure except that
depositions of experts shall be limited to one day of seven (7) hours, unless the
parties agree to additional time or the expert has provided more than one expert
report, in which case the expert may be deposed for an additional consecutive day
of seven (7) hours for a total of up to fourteen (14) hours.
Any party may later move to modify these limitations for good cause, and the
party’s ability to do so shall not be prejudiced in any way by this paragraph. For
example, Defendant advised Plaintiffs that Defendant currently intends to take the
depositions of the named inventors prior to claim construction briefing, and that if
Plaintiffs produce documents relevant to the inventors after that date, Defendant
reserves the right to seek leave of court to depose them again.
The parties recognize that this proceeding is still in a preliminary stage and that
discovery has not yet commenced. The limitations contained in this order may be
modified by agreement of the parties subject to approval of the court or by motion
to the court with the burden on the party seeking modification. Accordingly, the
parties agree to meet and confer in good faith about reasonable adjustments to any
of the preceding limits as discovery progresses. Furthermore, to the extent the

01980.00010/5886970.3

parties are unable to reach agreement, any party may later move to modify these
limitations for good cause.
6.

Privileged Information. There is no duty to disclose privileged documents or
information. However, the parties are directed to meet and confer concerning
privileged documents or information after the Status Conference. By the deadline
set 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. 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.

7.

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 Federal Rule of Civil Procedure 5. The parties shall promptly file a

01980.00010/5886970.3

notice with the Court that the disclosures required under this Order have taken
place.
8.

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.

9.

Discovery Disputes.
(a)

Except in cases involving claims of privilege, any party entitled to receive
disclosures (“Requesting Party”) may, after the deadline for making
disclosures, serve upon a party required to make disclosures (“Responding
Party”) a written statement, in letter form or otherwise, of any reason why
the Requesting Party believes that the Responding Party’s disclosures are
insufficient. The written statement shall list, by category, the items the
Requesting Party contends should be produced. The parties shall promptly
meet and confer. If the parties are unable to resolve their dispute, then the
Responding Party shall, within 14 days after service of the written
statement upon it, serve upon the Requesting Party 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 Requesting Party may thereafter file a motion to compel.

(b)

In addition to the requirements of Local Rule CV-7(h) and (i), an opposed
discovery-related motion must include a certification that an in-person

01980.00010/5886970.3

conference involving lead and local counsel for all parties to the discovery
dispute was held.
(c)

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).

10.

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.

11.

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

13.

Proposed Stipulations by the Parties Regarding Discovery.
(a)

Production Of Materials Obtained Via Third-Party Subpoena. A party who
serves a subpoena in this matter on a third party shall provide a copy to the
other party. Subject to the provisions in the parties’ Agreement Regarding
the Format of Document Production, a party who receives documents from
a third party pursuant to a subpoena will reproduce those documents to the
other party as soon as practicable and at most, no later than three (3)
business days after receiving the documents. Where reproduction of
documents within three (3) business days is not possible, the party who

01980.00010/5886970.3

received the documents will provide prompt notice to the other party and
will work in good faith to resolve the issue on a case-by-case basis.
(b)

Post-Complaint Privileged Documents.

No party shall be required to

identify on their respective privilege log any document or communication
dated on or after the filing of the lawsuit, which absent this provision, the
party would have been obligated to so identify on said privilege log. The
parties shall exchange their respective privilege document logs at a time to
be agreed upon by the parties following the production of documents.
(c)

Limitations on Expert Discovery. Testifying experts shall not be subject to
discovery of 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 are exempt from discovery. In addition, all communications
between counsel for a party and that party’s testifying expert, and all
materials generated by a testifying expert with respect to that person’s
work, are exempt from discovery unless they relate to the expert’s
compensation or identify facts, data or assumptions relied upon by the
expert in forming any opinions in this litigation and such information is not
already disclosed in the expert’s report.

(d)

Electronic Service.

The parties agree to serve documents, pleadings,

correspondence and other items electronically in lieu of service by U.S.
Mail or otherwise, to at least each attorney listed on the docket as attorney
of record for the opposing party or to at least the attorneys on an
agreed-upon service list. If the document, pleading, correspondence or

01980.00010/5886970.3

other item is too large to be served electronically, then a cover letter of other
similar notification shall be served electronically and the document,
pleading, correspondence or other item shall be served by Federal Express
for next day delivery.
(e)

Electronically-Stored

Information.

Discovery

and

production

of

electronically-stored information (ESI), including email and electronic
files, shall be governed by the parties’ Agreement Regarding the Format of
Document Productions.
14.

Courtesy Paper Copies.
Papers copies will not be accepted by this Court unless specifically requested.

15.
.

Hearing Notebooks.
Hearing notebooks are no longer required or requested. However, the Court may
request hearing notebooks in specific instances.

16.

Witness Disclosures
Any opinion testimony offered by a witness shall comply with the requirements in
the Federal Rules of Evidence, Federal Rules of Civil Procedure, and Local Rules
of this Court.

IT IS SO ORDERED.
SIGNED this 3rd day of January, 2012.
SIGNED this 12th day of May, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

01980.00010/5886970.3