WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 96

Submission of Proposed Agreed Discovery order by Alcatel-Lucent USA Inc., Ericsson Inc., Exedea INC., HTC America, Inc., HTC Corporation, Sony Ericsson Mobile Communications (USA) Inc., Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, WI-LAN Inc.. (Attachments: # 1 Text of Proposed Order)(Weaver, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,

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Plaintiff,
v.
ALCATEL-LUCENT USA INC.;
TELEFONAKTIEBOLAGET LM
ERICSSON; ERICSSON INC.; SONY
ERICSSON MOBILE COMMUNICATIONS
AB; SONY ERICSSON MOBILE
COMMUNICATIONS (USA) INC.; HTC
CORPORATION; HTC AMERICA, INC.;
EXEDEA INC.; LG ELECTRONICS, INC.;
LG ELECTRONICS MOBILECOMM U.S.A.,
INC.; LG ELECTRONICS U.S.A., INC.
Defendants.

Civil Action No. 6:10-cv-521-LED
JURY TRIAL DEMANDED

JOINT AGREED 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. Within thirty (30) days after the Scheduling Conference, and
without awaiting a discovery request, 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 such person;
E.

F.

any settlement agreements relevant to the subject matter of this action;

G.
2.

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 statement of any party to the litigation;

Additional Disclosures. Each party, without awaiting a discovery request, shall
provide to every other party the following information:
A.

B.

3.

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, not later than September
14, 2011, and without awaiting a discovery request, a copy of all
documents, data compilations and tangible things – other than source code
for the accused products – 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. Source code for each accused product will be provided for
inspection and production as governed by a separate agreement of the
parties, or by a Court order, which agreement or order shall set forth the
scope and timing of the source-code production; and

Testifying Experts. Each party is limited to four testifying expert witnesses.
Any testifying expert witness(es) shared by more than one Defendant shall count
as one of the four allotted testifying expert witness(es) for each of those
Defendants. For each testifying expert, by the date provided in the Docket
Control Order, each party shall disclose to the other party or parties:
A.

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

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

The subject matter on which the expert will testify;

C.

A report as required by Federal Rule of Civil Procedure 26(a)(2)(B);

D.

If the expert is not retained by, employed by, or otherwise subject to the
control of the disclosing party, documents reflecting the general substance
of the expert’s mental impressions and opinions;

E.

If the expert is retained by, employed by, or otherwise subject to the
control of one or more disclosing party;
(1)

all documents, tangible things, reports, models, or data
compilations that considered by the expert in forming any and all
opinions that the expert will express in this Litigation;

(2)

the expert’s current resume and bibliography; and

(3)

the disclosures required by Local Rule CV-26(b)(1).

F.
Discoverability of drafts of expert reports and communications
between a party’s attorney and the party’s experts shall be governed by
Rule 26(b)(4) of the Federal Rules of Civil Procedure, in the form in
which that Rule existed on June 24, 2011.
4.

Discovery Limitations. Discovery is limited in this cause to the disclosures
described in Paragraphs 1 - 3 together with the following limitations:
A.

Written Discovery
(1)

Plaintiff may serve up to fifteen (15) interrogatories stated
identically to all Defendants and up to fifteen (15) interrogatories
stated individually to each of the four individual Defendant Groups
(i.e., Alcatel-Lucent, the Sony Ericsson Defendants, the HTC
Defendants, and the Ericsson Defendants). Defendants may
collectively serve up to fifteen (15) interrogatories stated
identically on Plaintiff, and each of the four Defendant Groups
(i.e., Alcatel-Lucent, the Sony Ericsson Defendants, the HTC
Defendants, and the Ericsson Defendants) may serve up to fifteen
(15) additional interrogatories per Defendant Group on Plaintiff.

(2)

Plaintiff may serve up to thirty (30) requests for admission stated
identically to all Defendants and up to ten (10) requests for
admission stated individually to each individual Defendant Group

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(i.e., Alcatel-Lucent, the Sony Ericsson Defendants, the HTC
Defendants, and the Ericsson Defendants). Defendants may
collectively serve up to thirty (30) common requests for admission
stated identically to Plaintiff, and each Defendant Group may
individually serve up to ten (10) additional requests for admission
on Plaintiff. Additionally, any Party may serve upon any
Producing Party up to one hundred (100) requests for admission
regarding the genuineness or authenticity of documents produced
by that Producing Party, in a manner consistent with Rule 36 of the
Federal Rules of Civil Procedure.
B.

Fact Depositions of Parties and Non-Parties
(1)

Plaintiff may take up to forty (40) hours of non-expert depositions
per Defendant Group (i.e., Alcatel-Lucent, the Sony Ericsson
Defendants, the HTC Defendants, and the Ericsson Defendants),
including individual and Rule 30(b)(6) depositions, and Plaintiff
may take up to an additional fifty (50) hours of non-expert
depositions of non-party witnesses (e.g., former employees, thirdparty prior art or public use witnesses, customers, etc.).
Defendants agree to meet and confer in good faith should Plaintiff
request additional time to take non-expert depositions of any
Defendant Group.

(2)

Defendants, whether individually or collectively, may take up to a
combined total of sixty (60) hours of non-expert depositions of
Plaintiff (including Rule 30(b)(6) depositions and individual
depositions). Pursuant to Rule 30(a)(1), Defendants, whether
individually or collectively, may depose each of the named
inventors on the patent-in-suit, and each attorney or record for the
prosecution thereof, in their individual capacities for up to a total
of seven (7) hours per witness. Defendants, whether individually
or collectively, may take up to an additional one hundred fifty
(150) hours of non-expert depositions of non-party witnesses (e.g.,
former employees, third-party prior art or public use witnesses,
customers, etc.). Plaintiff agrees to meet and confer in good faith
should Defendants request additional time to take non-expert
depositions of Plaintiff.

(3)

Any party may elicit Rule 30(b)(1) testimony from a witness
designated as a Rule 30(b)(6) witness during any deposition taken
pursuant to Rule 30(b)(6), to the extent that the record clearly
indicates that any such questions and answers are being provided
in the witness’ individual capacity. Similarly, in order to ensure a
clear record, and notwithstanding limitations on deposition

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objections contained in Local Rule CV-30, counsel representing a
witness designated as a 30(b)(6) witness may object to questions
eliciting Rule 30(b)(1) testimony as “Objection, outside the scope
of the Rule 30(b)(6) topics for which the witness was designated”
or a similar objection.
(4)

C.

Except as set forth above, the duration of depositions shall be
governed by Rule 30(d)(1).

Expert Depositions
Promptly after the parties serve their expert reports, the parties shall confer
in good faith in an effort to reach agreement regarding limits on expert
deposition time.

D.

Reasonable Modifications
At the time of entry of this Order, this proceeding is still in a preliminary
stage, and discovery has not yet commenced. Accordingly, the parties
shall meet and confer in good faith about reasonable adjustments to any of
the preceding limits as discovery progresses. Furthermore, to the extent
the parties are unable to reach agreement, any party may move the Court
to modify these limitations for good cause.

5.

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 Scheduling Conference. 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, will enable the other parties to assess the applicability of the
privilege or protection. The parties agree that they need not exchange privilege
logs identifying privileged documents or attorney work product generated on or
after October 4, 2010. Any 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,
within thirty (30) days of the filing of the motion to compel, file with the Court its
response to the motion, including any proof in the form of declarations or
affidavits to support its 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.

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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 may present at trial:
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.

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.

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 or via electronic mail.

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.

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

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.

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, the parties may jointly request entry of a stipulated protective order, or
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.

16.

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

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.

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Dated: June 24, 2011

Respectfully submitted,

/s/ Gregory S. Arovas (with permission)
Gregory S. Arovas (NY Bar 2553782)
Robert A. Appleby (NY Bar 2681971)
Akshay S. Deoras (NY Bar 4701082)
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]

By:

/s/ David B. Weaver
David B. Weaver (TX Bar 00798576)
Lead Attorney
David D. Hornberger (TX Bar 24055686)
Juliet M. Dirba (TX Bar 24051063)
John A. Fedock (TX Bar 24059737)
Jeffrey T. Han (TX Bar 24069870)
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Defendant Alcatel-Lucent
USA Inc.
/s/ Martin R. Bader (with permission)
Stephen S. Korniczky (CA Bar 135532)
Martin R. Bader (CA Bar 222865)
Daniel N. Yannuzzi (CA Bar 196612)
Inge Larish (TX Bar 00796924)

Charles P. Ebertin (CA Bar 161374)
VINSON & ELKINS LLP
525 University Avenue, Suite 410
Palo Alto, CA 94301-1918
Tel: [phone]
Fax: [phone]
[e-mail]

SHEPPARD MULLIN RICHTER & HAMPTON LLP

12275 El Camino Real, Suite 200
San Diego, CA 92130
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Attorneys for Plaintiff, Wi-LAN Inc.
/s/Bruce S. Sostek (with permission)
Bruce S. Sostek (TX Bar 18855700)

Attorneys for Defendants HTC
Corporation, HTC America Inc., and
Exeda Inc.

THOMPSON KNIGHT LLP

1722 Routh Street, Suite 1500
Dallas, TX 75201
Tel: [phone]
Fax: [phone]
[e-mail]
Lead Counsel for Defendants Ericsson
Inc., Telefonaktiebolaget LM Ericsson,
Sony Ericsson Mobile Communications
(USA) Inc.

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CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). All other counsel
of record not deemed to have consented to electronic service were served with a true and correct
copy of the foregoing by email and/or fax, on this the 24th day of June 2011.

/s/ David B. Weaver
David B. Weaver

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