Aire Technology Limited v. Apple Inc

Filing 54

ORDER GRANTING 36 DISCOVERY AND SCHEDULING ORDER Signed by Judge Alan D Albright. (sv)

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 1 of 7

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
AIRE TECHNOLOGY LTD
Plaintiff,
v.
APPLE INC.
Defendant.

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CIVIL NO. 6:21-CV-01101-ADA

DISCOVERY AND SCHEDULING ORDER
Before the Court is Apple Inc.’s (“Defendant”) motion for leave to supplement its motion
for transfer. ECF No. 36. After considering the motion and opposition, the Court hereby GRANTS
Defendant’s motion for leave to supplement.
A party may move to transfer a case for “the convenience of parties and witnesses, in the
interest of justice.” 28 U.S.C. § 1404. As part of this inquiry, Courts look to the locations of the
parties, the witnesses, and the evidence, among other factors. In re Volkswagen AG, 371 F.3d 201,
203 (5th Cir. 2004) (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)).
The Court intends to make a fair, evidenced-based ruling on Defendant’s pending motion
to transfer based on an accurate identification of the witnesses, parties, and evidence relevant to
this case. Supplementing the record furthers this goal. In fairness, if one party supplements its
motion, the Court will give the other party the same opportunity. Thus, the Court permits both
parties to provide supplemental evidence and arguments.
Full fact discovery will allow the parties to provide the Court with the best evidence for
ruling on a motion to transfer. In this Court’s experience, speculation and incompletely discovery
often plagues early transfer motions. Before fact discovery, parties have not yet identified the
relevant prior art to assert at trial, the relevant witnesses, the relevant third parties, or the relevant

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 2 of 7

evidence. Thus, in early motions to transfer, the Volkswagen factors drive parties to identify
witnesses and evidence based on location rather than relevance. Too frequently, such transferdriven speculation about the witnesses and evidence fails to align with reality. At trial, the parties
end up calling different witnesses, asserting different prior art, and presenting different evidence
from what they identify in their transfer briefs. Requiring venue discovery to precede fact
discovery also frequently leads to unnecessary discovery disputes about whether certain discovery
requests fall into one bucket or the other.
Thus, the Court finds it prudent to have the parties to re-brief the motion to transfer in
accordance with the appended schedule after the parties conduct fact discovery and determine
which witnesses and evidence they intend to call at trial. Defendant has assured this Court that it
would not oppose a continuance, and that “a continuance would not affect the overall trajectory of
this case” because fact discovery should commence regardless of whether a continuance is or is
not granted. ECF No. 36 at 6.
IT IS HEREBY ORDERED that:
1) Defendant’s motion is GRANTED. Defendant has leave to file the supplemental
declarations attached as Exhibits 1-7 of ECF No. 36.
2) Full fact discovery is now open.
3) All other scheduled deadlines are vacated.
4) The parties shall meet and confer to file a joint motion to enter a scheduling order for
replacement briefing based on the appended schedule within two weeks.
SIGNED this 22nd day of August, 2022.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 3 of 7

APPENDIX A – EXEMPLARY SCHEDULE

1

Deadline

Item

8 weeks after receiving or
waiving service of
complaint or 3 weeks after
the CMC, whichever is
later.

Deadline to file a motion for inter-district transfer. After this
deadline, movants must seek leave of Court and show good
cause for the delay.

7 days before CMC

Plaintiff serves preliminary1 infringement contentions in the
form of a chart setting forth where in the accused product(s)
each element of the asserted claim(s) are found. Plaintiff shall
also identify the earliest priority date (i.e. the earliest date of
invention) for each asserted claim and produce: (1) all
documents evidencing conception and reduction to practice
for each claimed invention, and (2) a copy of the file history
for each patent in suit.

2 weeks after CMC

The Parties shall file a motion to enter an agreed Scheduling
Order. If the parties cannot agree, the parties shall submit a
separate Joint Motion for entry of Scheduling Order briefly
setting forth their respective positions on items where they
cannot agree. Absent agreement of the parties, the Plaintiff
shall be responsible for the timely submission of this and other
Joint filings.

7 weeks after CMC

Defendant serves preliminary invalidity contentions in the
form of (1) a chart setting forth where in the prior art
references each element of the asserted claim(s) are found, (2)
an identification of any limitations the Defendant contends are
indefinite or lack written description under section 112, and
(3) an identification of any claims the Defendant contends are
directed to ineligible subject matter under section 101.
Defendant shall also produce (1) all prior art referenced in the
invalidity contentions, and (2) technical documents, including
software where applicable, sufficient to show the operation of
the accused product(s).

9 weeks after CMC

Parties exchange claim terms for construction.

The parties may amend preliminary infringement contentions and preliminary invalidity contentions without leave
of court so long as counsel certifies that it undertook reasonable efforts to prepare its preliminary contentions and the
amendment is based on material identified after those preliminary contentions were served and should do so
seasonably upon identifying any such material. Any amendment to add patent claims requires leave of court so that
the Court can address any scheduling issues.

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 4 of 7

11 weeks after CMC

Parties exchange proposed claim constructions.

12 weeks after CMC

Parties disclose extrinsic evidence. The parties shall disclose
any extrinsic evidence, including the identity of any expert
witness they may rely upon with respect to claim construction
or indefiniteness. With respect to any expert identified, the
parties shall identify the scope of the topics for the witness’s
expected testimony.2 With respect to items of extrinsic
evidence, the parties shall identify each such item by
production number or produce a copy of any such item if not
previously produced.

13 weeks after CMC

Deadline to meet and confer to narrow terms in dispute and
exchange revised list of terms/constructions.

14 weeks after CMC

Defendant files Opening claim construction brief, including
any arguments that any claim terms are indefinite.

17 weeks after CMC

Plaintiff files Responsive claim construction brief.

19 weeks after CMC

Defendant files Reply claim construction brief.

19 weeks after CMC

Parties to jointly email the law clerks (see OGP at 1) to
confirm their Markman date and to notify if any venue or
jurisdictional motions remain unripe for resolution.

21 weeks after CMC

Plaintiff files a Sur-Reply claim construction brief.

3 business days after
submission of sur-reply

Parties submit Joint Claim Construction Statement and email
the law clerks an editable copy.
See General Issues Note #7 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).

22 weeks after CMC (but
at least 10 days before
Markman hearing)

Parties submit optional technical tutorials to the Court and
technical advisor (if appointed).

23 weeks after CMC (or as
soon as practicable)3

Markman Hearing at 9:00 a.m. This date is a placeholder and
the Court may adjust this date as the Markman hearing
approaches.

---DELAYED---

2

Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied upon by the other party.
All deadlines hereafter follow the original Markman hearing date and do not change if the Court delays the Markman
hearing.
3

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 5 of 7

The Markman hearing is delayed until the Court resolves
the transfer motion.
1 business day after
Markman hearing

Fact Discovery opens; deadline to serve Initial Disclosures per
Rule 26(a).

6 weeks after Markman
hearing

Deadline to add parties.

8 weeks after Markman
hearing

Deadline to serve Final Infringement and Invalidity
Contentions. After this date, leave of Court is required for any
amendment to infringement or invalidity contentions. This
deadline does not relieve the parties of their obligation to
seasonably amend if new information is identified after initial
contentions.

16 weeks after Markman
hearing

Deadline to amend pleadings. A motion is not required unless
the amendment adds patents or patent claims. (Note: This
includes amendments in response to a 12(c) motion.)

26 weeks after Markman

Deadline for the first of two meet and confers to discuss
significantly narrowing the number of claims asserted and
prior art references at issue to triable limits (10 hours of
trial per side).

29 weeks after Markman

Deadline for the second of two meet and confers to discuss
significantly narrowing the number of claims asserted and
prior art references at issue to triable limits. Unless the
parties agree to the narrowing, they are ordered to contact
the Court’s law clerk to arrange a teleconference with the
Court to resolve the disputed issues.

30 weeks after Markman
hearing

Close of Fact Discovery.
Parties shall exchange preliminary exhibit lists and
witness lists. The preliminary exhibit lists and witness lists
may be freely amended in good faith so long as the
amendments do not amount to transfer motion
gamesmanship.

32 weeks after Markman

Deadline for Plaintiff’s replacement transfer opposition
brief (15 pages).

34 weeks after Markman

Deadline for Defendant’s replacement transfer reply brief
(15 pages).

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 6 of 7

36 weeks after Markman

Deadline for Defendant’s replacement transfer sur-reply
brief (10 pages).

40 weeks after Markman
hearing

Markman hearing delayed to this date.

42 weeks after Markman
hearing

Opening Expert Reports.

45 weeks after Markman
hearing

Rebuttal Expert Reports.

48 weeks after Markman
hearing

Close of Expert Discovery.

50 weeks after Markman
hearing

Dispositive motion deadline and Daubert motion deadline.
See General Issues Note #7 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).

52 weeks after Markman
hearing

Serve Pretrial Disclosures (jury instructions, exhibits lists,
witness lists, discovery and deposition designations).

54 weeks after Markman
hearing

Serve objections to pretrial disclosures/rebuttal disclosures.

55 weeks after Markman
hearing

Serve objections to rebuttal disclosures; file Motions in
limine.

56 weeks after Markman
hearing

File Joint Pretrial Order and Pretrial Submissions (jury
instructions, final exhibits lists, final witness lists, discovery
and deposition designations); file oppositions to motions in
limine

57 weeks after Markman
hearing

File Notice of Request for Daily Transcript or Real Time
Reporting. If a daily transcript or real time reporting of court
proceedings is requested for trial, the party or parties making
said request shall file a notice with the Court and email the
Court Reporter, Kristie Davis at [e-mail]
Deadline to meet and confer regarding remaining objections
and disputes on motions in limine.

8 weeks before trial

Parties to jointly email the Court’s law clerk (See OGP at 1) to
confirm their pretrial conference and trial dates.

Case 6:21-cv-01101-ADA Document 54 Filed 08/22/22 Page 7 of 7

3 business days before
Final Pretrial Conference.

File joint notice identifying remaining objections to pretrial
disclosures and disputes on motions in limine.

59 weeks after Markman
hearing (or as soon as
practicable)

Final Pretrial Conference. Held in person unless otherwise
requested.

60 weeks after Markman
hearing (or as soon as
practicable)4

Jury Selection/Trial.

If the actual trial date materially differs from the Court’s default schedule, the Court will consider reasonable
amendments to the case schedule post-Markman that are consistent with the Court’s default deadlines in light of the
actual trial date.
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