Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 147

DISCOVERY ORDER. Signed by Judge Leonard Davis on 06/07/11. cc:attys 6-07-11(mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
SONY CORPORATION OF AMERICA,
ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
DISK DOCTORS LABS, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,

vs.
NATIONAL INSTURMENTS COPR., ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
ENGRASP, INC., ET AL.
Defendants.

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CASE NO. 6:10-CV-373
PATENT CASE

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CASE NO. 6:10-CV-471
PATENT CASE

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CASE NO. 6:10-CV-472
PATENT CASE

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CASE NO. 6:10-CV-591
PATENT CASE

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
BMC SOFTWARE, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
FOXIT CORPORATION, ET AL.
Defendants.

SYMANTEC CORPORATION, ET AL.
Plaintiffs,
vs.
UNILOC USA, INC., ET AL.
Defendants.

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CASE NO. 6:10-CV-636
PATENT CASE

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CASE NO. 6:10-CV-691
PATENT CASE

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CASE NO. 6:11-CV-33
PATENT CASE

DISCOVERY ORDER
After review of the pleaded claims and defenses in this action and in furtherance of the
management of the Court’s docket under Fed. R. Civ. P. 16, the Court enters the following
Discovery Order:
1.

Disclosures. On or before the date indicated in the Docket Control Order, and without
awaiting a discovery request, each party shall disclose to every other party the following
information:
A.
B
C.

the correct names of the parties to the lawsuit;
the name, address, and telephone number of any potential parties;
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

D.

E.

F.
G.
2.

at trial);
the name, address, and telephone number of persons having knowledge of relevant
facts, a brief statement of each identified person’s connection with the case, and a
brief, fair summary of the substance of the information known by such person;
any indemnity and insuring agreements under which any person or entity 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;
any settlement agreements relevant to the subject matter of this action;
any statement of any party to the litigation;

Additional Disclosures. Each party shall provide to every other party the following
information:
A.
B.

C.

the disclosures required by the Court’s Patent Rules in accordance with the
deadlines set forth in said rules and the Court’s Docket Control Order;
to the extent that any party pleads a claim for relief or defensive matter other than
those addressed in the Patent Rules1, on or before the date indicated in the Docket
Control Order and without awaiting a discovery request, a copy of all documents,
data compilations and tangible things in the possession, custody, or control of the
party that are relevant to those additionally pleaded claims or defenses involved in
this action. By written agreement of all parties, alternative forms of disclosure
may be provided in lieu of paper copies. For example, the parties may agree to
exchange images of documents electronically or by means of computer disk; or the
parties may agree to review and copy disclosure materials at the offices of the
attorneys representing the parties instead of requiring each side to furnish paper
copies of the disclosure materials; and
On or before the date indicated in the Docket Control Order, a complete
computation of any category of damages claimed by any party to the action,
making available for inspection and copying (See Local Rule CV-34), the
documents or other evidentiary materials on which such computation is based,
including materials bearing on the nature and extent of injuries suffered; and those
documents and authorizations described in Local Rule CV-34.

3.
Testifying Experts. Given the uncertainties as to the number of parties who will be
proceeding to trial and the proper grouping of parties for trial, it is premature to determine how
experts will be utilized at trial. Therefore, the parties shall present their positions as to the total
number of experts, and the division of “common” vs. individual experts among the Defendants in
their post-Markman Order Notice that the cases are ready for a Management Conference.

1

The Patent Rules are Appendix M to the Local Rules which are available on the Court’s website at
www.txed.uscourts.gov.

4.

Discovery Limitations.
A. Interrogatories: Plaintiff may serve up to fifteen (15) interrogatories
collectively on the Defendants, and up to twenty (20) additional individual
interrogatories per Defendant. The Defendants shall be allowed fifteen (15)
collective interrogatories and twenty (20) additional individual interrogatories per
Defendant.
B. Requests for Admission:
admission served in this case:

The following limits will apply to requests for

(1)
Except as indicated below, Plaintiff may serve up to thirty five (35)
requests for admission collectively on the Defendants2 and up to thirty five (35)
additional individual requests for each Defendant. The Defendants shall be allowed
thirty five (35) collective requests for admission and thirty five (35) additional
individual requests for admission per Defendant. Defendants to make their best
efforts to coordinate requests so as to avoid duplicative efforts.
(2)
Requests for admission regarding the admissibility of documents:
The parties are allowed an unlimited number of requests for admission regarding
authenticity or the admissibility of documents. However, prior to serving any
request for admission regarding the admissibility of documents, each party agrees
to request that the opposing party stipulate to the authenticity or admissibility of
such documents. If the opposing party fails to stipulate to the admissibility of all
such documents within two weeks of such request for stipulation, the requesting
party may serve on the opposing party requests for admission on all documents
whose authenticity or admissibility has not been stipulated.
C. Third party subpoenas: The parties may serve subpoenas for third parties
to produce documents. The parties will serve each other with copies of any third
party subpoenas on the same day the subpoena or notice is served on the third party.
The parties will serve each other with copies of any documents produced by third
parties pursuant to subpoena within three (3) business days of receipt. In no event
shall a party serve such documents less than three (3) business days before any
deposition of the third party from whom the documents were originally produced.

2

The terms “Defendants” and “Plaintiffs” in this Order refers to the named Plaintiffs and Defendants in
each of the separate Uniloc actions. The agreed upon limitations are limits for each separate case and are not limits
for all the cases collectively.

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D.
Depositions:
this case:

The parties agree to the following limits on depositions in

(1) Parties and Third-parties: Each side, Plaintiff and Defendants
collectively, may each take up to 150 hours of deposition testimony. This limit
includes all depositions of parties and third-parties, but excludes expert witnesses.
(2)
Expert Witnesses:
Depositions of Expert witnesses shall be
limited as follows. The parties agree to meet and confer in good faith regarding
additional deposition time should a single expert be designated to testify on
multiple subjects, such as infringement and validity.

The parties shall present their positions as to the limits for expert
depositions in their post-Markman Order Notice that the cases are ready for a
Management Conference.

A testifying expert’s draft reports, notes, outlines, and any other writings leading up
to his or her final report(s) in this case are exempt from discovery. In addition, all
communications with, and all materials generated by, a testifying expert with
respect to his work are exempt from discovery unless relied upon by the expert in
forming his opinions. However, the expert must produce his or her final report and
all materials on which he or she relied.

E.
Modification of Deposition Limits: The parties agree to meet and confer
in good faith as necessary as discovery progresses regarding possible modifications
to the deposition limitations set forth in paragraphs 4(D): The parties may petition
the Court for additional time, upon a showing of specificity why more time is
necessary. Prior to any Party requesting additional deposition hours from the Court,
they are ordered to meet and confer and then submit a proposal to the Court at least
30 days before discovery is scheduled to close that demonstrates good cause for
allowing the additional time. Such a proposal should, in no more than five pages,
briefly outline why more deposition time is necessary in light of a party’s particular
trial strategy and plan. The proposal should expressly state how much additional
time is desired, the subject matter on which additional witnesses will be deposed
(e.g., infringement liability, damages, willfulness, etc.) and the time frame in which
the depositions will be carried out. Should there be a request by Defendants to
take the requested depositions together, or individually, this preference should be
noted as well.

5.

Privileged Information. There is no duty to disclose privileged documents or
information. However, the parties are directed to meet and confer concerning privileged
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documents or information. By the date provided 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, with enable the other parties to assess the applicability of the
privilege or protection. A party may move the Court for an order compelling the production
of any privileged documents or information identified on any other party’s privilege log.
If such a motion is made, the party asserting privilege shall file with the Court within thirty
(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. If the parties have no disputes concerning
privileged documents or information, then the parties shall file a notice so stating by the
date provided in the Docket Control Order. The parties, and their law firms, need not log
entries for materials or communications that are privileged or subject to protection as
litigation preparation material related to current or prior litigation of the patent at issue. In
addition, if a party inadvertently fails to identify a document on the privilege log
exchanged by the parties, such failure shall not be deemed a waiver of privilege. Upon
discovery, the party shall provide prompt written notice to the other party, identifying the
document or information and the basis for any disputed claim of privileged as above.
6.

Pre-trial Disclosures. By the date provided in the Docket Control Order, each party shall
provide to every other party the following disclosures regarding the evidence that the
disclosing party intends to present at trial:
A.

B.

C.

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.
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.
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.

By the date provided in the Docket Control Order, a party may serve and file a list
disclosing (1) any objections to the use under Rule 32(a) of a deposition designated by
another party under subparagraph “B.” above; and (2) any objections, together with the
grounds therefor, that may be made to the admissibility of materials identified under
subparagraph “C.” above. 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.
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.
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8.

Exchange of Disclosures. 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.

9.

Notification of the Court. 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.

Requests for Production. Because documents relevant to any claim or defense are to be
produced pursuant to the Patent Rules and paragraphs one and two of this Order, requests
for production are unnecessary. However, should a party believe that certain relevant
documents have not been produced, that party may request said documents by letter. The
Court will entertain a motion to compel documents without the necessity of a movant
propounding formal requests for production.

12.

Discovery Disputes. 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(f). If the undersigned is not available, the parties shall proceed in accordance with
Local Rule CV-26(f).

13.

Discovery Conferences. Within 72 hours of the Court setting any discovery motion for
hearing, each party’s lead trial counsel and local counsel shall meet and confer in person or
by telephone in an effort to resolve the dispute without Court intervention. Counsel shall
promptly notify the Court of the results of the meeting. Attendance by proxy is not
permitted. Unless excused by the Court, lead counsel shall attend any discovery hearing
set by the Court.

14.

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. Parties
asserting the defense of qualified immunity may submit a motion to limit disclosure to
those materials necessary to decide the issue of qualified immunity.

15.

Protective Orders. A copy of the Court’s standard protective order is available on the
Court’s website at www.txed.uscourts.gov entitled “Judge Davis Standard Protective
Order.” A party may request that the Court issue the Protective Order. However, a party
may propose to modify the terms of the Protective Order for good cause. The Court
authorizes the parties to file any document that is subject to a protective order under seal.
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As provided in P.R. 2-2, until a protective order is issued by the Court, documents marked
with a “confidential” or some other confidential designation (such as “Confidential –
Outside Attorneys Eyes Only”) by the disclosing party shall be treated as “Outside
Attorneys Eyes Only” and disclosure shall be limited to each party’s outside attorney(s) of
record and the employees of such outside attorney(s).
16.

Courtesy Paper Copies.
specifically requested.

Paper copies will not be accepted by this Court unless

17.

Hearing Notebooks. With the exception of Markman notebooks required in the Docket
Control Order, hearing notebooks are no longer required or requested. However, the
Court may request hearing notebooks in specific instances.

18.

E-Filing. The parties agree to accept service by electronic mail of all documents not filed
with the Court. Except for good cause shown or as provided in the Local Rules, all
documents (with exception of those documents referenced in the local rules) in cases
pending in this Court shall be filed electronically. This includes notices of disclosure,
notices of no privilege issues, proposed orders, and mediator’s reports. The file in each
case is maintained electronically. Neither the clerk’s office nor the Court will maintain a
paper file except as provided in the local rules. All briefs and patents attached as exhibits
to any filing submitted electronically shall be in searchable PDF format. Any other
documents attached as exhibits to any filing submitted electronically should be in
searchable PDF format whenever possible.
When filing electronically, the Court prefers and the Parties agree:
(i) that documents be published to PDF and then filed with the Court rather than filing
scanned documents;
(ii) proposed orders be included as attachments to motions filed rather than incorporated
within the body of the filed motion;
(iii) proposed orders should NOT contain an “it is so ordered” designation, signature line,
or date line since this information is contained in the Judge’s electronic signature stamp;
and
(iv) proposed orders should NOT contain the word “Proposed” in the title of the document.
So ORDERED and SIGNED this 7th day of June, 2011.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE
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