Mullen Industries LLC v. Apple Inc.

Filing 51

Discovery Dispute ORDER. Signed by Judge Alan D Albright. (lad)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
MULLEN INDUSTRIES LLC,
Plaintiff,
CASE NO. 6:22-CV-00145-ADA

v.
APPLE INC.,

Defendant.
DISCOVERY DISPUTE ORDER

The parties submitted a discovery dispute to the Court by email. The Court heard oral
argument on September 29, 2022. The Court GRANTS-IN-PART and DENIES-IN-PART the
requested belief.
I. FIRST ISSUE: APPLE’S 30(B)(6) VENUE DEPOSITION
A.

Plaintiff’s Position

Apple delayed filing its motion to transfer until August 18, 2022, and stated today,
September 21, that it will not appear for the deposition noticed for September 29 in Plaintiff’s
notice of 30(b)(6) deposition served on August 26, 2022. Apple also has not provided alternative
specific date(s) when it will testify on such deposition topics. As a result, Apple’s delay is
prejudicing Plaintiff’s ability to file its response in opposition to Apple’s motion to transfer, and
the Court has rescheduled the Markman hearing originally scheduled for October 28,
2022. Plaintiff has already agreed to Apple’s request to conduct such deposition remotely.
Relief Sought: Order that “Apple must provide within 2 business days of this Order
multiple dates certain before October 7, 2022 when Apple is available to testify on the noticed
topics as further narrowed in this Order. Apple’s deposition will continue day-to-day on

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consecutive days until completed. Apple’s objections to deposition Topics 1, 3, and 5, are ruled
on below.”
B.

Defendant’s Position

As an initial matter, Plaintiff has suffered no prejudice as venue discovery closes October
27, 2022 and the Markman hearing is scheduled for December 2, 2022.
This dispute consists primarily of two issues: the improper breadth of Mullen’s deposition
topics, and the scheduling of the depositions. As explained below, Mullen’s unwillingness to
compromise on its improperly broad topics has impaired Apple’s ability to identify and schedule
its witnesses.
First, the core issue boils down to Mullen’s overly broad definition of “Accused
Instrumentalities.” Mullen alleges infringement based on two features: (1) the “Find My”
functionality that allow a user of certain Apple devices to locate other devices; and (2) the ability
of an Apple Watch paired to an iPhone to provide notifications based on the type of event.
Despite alleging infringement based on these specific features, Mullen now seeks
expansive venue discovery unbounded by its infringement theories. For example, Mullen seeks
testimony regarding “Apple end-user device(s)” as well as Apple’s “Server(s),” as shown on pages
2-3 of Mullen’s Deposition Notice. (Mullen uses the same definition in its Interrogatories and
Requests for Production of Documents.) Apple objected to this definition as being overly broad,
unduly burdensome, vague, and ambiguous.
During multiple telephonic meet-and-confers, counsel for Mullen refused to negotiate in
order to narrow its 30(b)(6) topics. Now, for the first time in this dispute chart, Mullen only
disputes Apple’s objections to Topics 1, 3, and 5. As discussed further below, Apple has offered
and remains willing to put up witnesses for these topics, subject to its objections regarding the
scope of the depositions. While Rule 30(b)(6) includes no such requirement, Apple will endeavor
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to present its witnesses sequentially. But given the uncertainty of how long each deposition will
take as well as the witnesses’ schedules, cannot guarantee that the witnesses will be available in
sequence. Accordingly, Apple is conferring with approximately twenty potential witnesses to
cover the eleven overly broad topics, subject to Apple’s objections, and will begin providing dates
imminently.
Relief Sought: Order that “Apple will identify witnesses to testify regarding Topics 1, 3,
and 5 before the close of venue discovery. Mullen’s objection that the depositions must take place
day-to-day until completed is overruled. Apple’s objections to Mullen’s deposition Topics are
sustained.”
C.

The Court’s Ruling

IT IS HEREBY ORDERED that, as to scheduling, Apple must provide within 2 business
day of this Order multiple dates certain before October 7, 2022 when Apple is available to testify
on the noticed topics. The deposition will continue day-to-day on consecutive days until
completed unless Apple identifies non-consecutive days in advance.
The witnesses must be prepared, at minimum, on the following topics articulated by
Plaintiff during oral argument: the use of secure enclave processors; manufacturing, testing, and
shipping of mac pro computers in Texas; services performed for Apple by Flex Limited in the
Western District of Texas; Apple employees who interface with the Flex operation; employees
who provide support for the accused features at Apple care and call center; employees in Texas
who work on marketing, sales, profits, or costs of accused end products that contain the accused
features. Within these topics, the witnesses may limit their preparation to the relevance and
infringement theories and damages theories articulated by the plaintiff during oral argument or as
narrowed by the Court in sections below.

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II. SECOND ISSUE: DISPUTE OVER INTERROGATORY AND REQUEST FOR
PRODUCTION 1
A.

Discovery at Issue

Interrogatory 1 asks Apple to identify and describe the work of each Apple employee or
third party in Texas or WDTX on the design, development, manufacture, test, finance-related
topics, and other topics regarding the Accused Instrumentalities, including but not limited to
individuals identified in Exs. A and B. Request for Production 1 seeks documents regarding the
same. The first 30(b)(6) deposition topic seeks testimony regarding the same.
B.

Plaintiff’s Position

Apple’s ROG response only identified a subset of such requested individuals regarding
“design”—i.e., Apple identified a single Apple WDTX employee by name, referred to “four
employees located in Austin, Texas” that Apple did not name, and improperly “reserv[ed] its right
to supplement … at the appropriate time.” Apple also did not fully respond to ROG 1 regarding,
and objected to providing a witness to testify responsive to Topic 1 regarding, “manufacture,”
“development,”

“testing,”

“financial,”

and

other

information

regarding

Accused

Instrumentalities. For example, Apple did not describe the work performed by individuals Plaintiff
specifically identified by name in Exhibits A and B to Plaintiff’s discovery requests, including (i)
specific WDTX Apple employees who Plaintiff contends work on, e.g., the design and
development of the accused Secure Enclave Processor and topics regarding damages, and (ii)
specific third-party Flex Ltd. employees in WDTX who Plaintiff contends work on the design,
manufacture, testing, and shipping of accused Mac Pro computers. See e.g., CPC Patent Techs.
Pty Ltd. v. Apple Inc., No. 6:21-cv-00165-ADA, Dkt. 82, at 10, 17 (W.D. Tex. Feb. 8, 2022)
(holding such information regarding Flex Ltd. is highly relevant to infringement, damages, and
WDTX local interest). Apple produced no documents.

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Relief Requested: Order that “Within 2 business days of the date of this Order: (i) Apple
is compelled to fully respond to ROG 1 by identifying and describing the work of each Apple
employee or third party in Texas or WDTX on the design, development, manufacture, test, financerelated topics, marketing, and advertising regarding the Accused Instrumentalities, including but
not limited to the individuals identified in Exs. A and B to Plaintiff’s discovery requests; and (ii)
Apple must produce documents responsive to RFP 1. Apple’s objection to Topic 1 is overruled.”
C.

Defendant’s Position

As explained above, Mullen’s definition of “Accused Instrumentalities” renders it
impossible to respond to these requests as written. Mullen seeks information regarding anyone
(regardless of whether they are Apple employees) in Texas who have any involvement with
Apple’s end-user devices.
Nonetheless, Apple conducted an investigation into the enumerated topics as they relate to
the functionalities that Mullen has accused of infringement. Subsequently, Apple objected and
provided a substantive response as it relates to the functionalities accused of infringement in this
case.
In order to seek a compromise, Apple is conducting a further investigation into the job
responsibilities of the individuals identified in Exhibits A and B, despite the fact that Apple’s initial
investigation did not reveal that they had responsibilities relevant to the accused functionalities.
Without waiving its objections, Apple will supplement with regard to the 31 individuals
identified in Exhibits A and B within five business days. After receiving these supplemental
responses, Mullen may identify up to 8 of these individuals for deposition testimony on Topic #1,
to the extent they are Apple employees.
Relief Requested: Order that “Within five business days of this Order, Apple will identify
and describe the work of each Apple employee identified in Exhibits A and B, and produce
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responsive, non-privileged documents to the extent they exist and are found after a reasonable
investigation. After receiving Apple’s supplemental discovery response, Mullen may identify up
to 8 of these individuals for deposition testimony on Topic #1, to the extent they are Apple
employees. Apple’s objections to interrogatory #1, RFP #1, and Topic #1 are sustained.”
D.

The Court’s Ruling

IT IS HEREBY ORDERED that within 5 business days of the date of this Order: (i)
Apple is compelled to fully respond to ROG 1 by identifying and describing the work of each
Apple employee or third party in Texas or WDTX on the design, development, manufacture, test,
finance-related topics, marketing, and advertising regarding the Accused Instrumentalities,
including but not limited to the individuals identified in Exs. A and B to Plaintiff’s discovery
requests; and (ii) Apple must produce documents responsive to RFP 1. For information about third
parties, Apple’s response may be limited to Apple’s knowledge based on Apple’s interactions with
those third parties.
III. THIRD ISSUE: DISPUTE OVER INTERROGATORY AND REQUEST FOR
PRODUCTION 2
A.

Discovery at Issue

Interrogatory 2 asks Apple to identify and describe the work of each Apple employee or
third party in Texas or WDTX who work on marketing and sales of any Accused Instrumentality,
including revenues, profits and costs. Request for Production 2 seeks documents regarding the
same.
B.

Plaintiff’s Position

Apple limited its response to ROG 2 to “marketing,” and excluded “sales” and “revenues,
costs, and profits,” while improperly “reserv[ing] its right to supplement … at the appropriate
time.” Such information is relevant at least to damages. Apple produced no documents.

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Relief Sought: Order that “Within 2 business days of the date of this Order: (i) Apple is
compelled to fully respond to ROG 2 by identifying and describing the work of each Apple
employee or third party in Texas or WDTX on marketing and sales of any Accused Instrumentality,
including but not limited to revenues, profits and costs; and (ii) Apple must produce documents
responsive to RFP 2.”
C.

Defendant’s Position

Mullen seeks information regarding third parties and also any individual who “work(s) on
marketing and sales of any Accused Instrumentality,” which Mullen interprets to cover any Apple
end-user device. As explained above, this is incredibly expansive and goes far beyond what is
actually accused of infringement.
Nonetheless, Apple engaged in a diligent investigation and found that Apple’s employees
responsible for marketing related to the accused functionalities are not located in Texas.
Apple is performing further investigation into whether any Apple employees that have
responsibility for sales related to the accused functionalities are located in Texas, and supplement
within five business days.
Relief Sought: Order that “Within five business days of this Order, if found after a
reasonable investigation, Apple will identify and describe the work of its employees in the WDTX
who have responsibility for sales related to the Find My and Watch notifications functionalities,
and produce responsive, non-privileged documents to the extent they exist and are found after a
reasonable investigation. Apple’s objections to interrogatory #2 and RFP #2 are sustained.”
D.

The Court’s Ruling

Within 5 business days of the date of this Order: (i) Apple is compelled to fully respond to
ROG 2 by identifying and describing the work of each Apple employee or third party in Texas or

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WDTX on marketing and sales of any Accused Instrumentality, including but not limited to
revenues, profits and costs; and (ii) Apple must produce documents responsive to RFP 2.
IV. FOURTH ISSUE: DISPUTE OVER INTERROGATORY AND REQUEST FOR
PRODUCTION 3
A.

Discovery at Issue

Interrogatory 3 asks Apple to identify and describe the work of each Apple employee or
third party in Texas or WDTX who work in Apple Care, call center(s), or customer service
regarding any Accused Instrumentality, including but not limited to individuals identified in Ex. C.
Request for Production 3 seeks documents regarding the same. The third 30(b)(6) deposition topic
seeks testimony regarding the same.
B.

Plaintiff’s Position

Apple did not answer this interrogatory, and instead improperly “reserv[ed] its right to
supplement … at the appropriate time.” For example, Apple did not describe the work performed
by Apple employees that Plaintiff specifically identified by name in Exhibit C to Plaintiff’s
discovery requests. Such information is relevant at least to damages, including the value of and
demand for Plaintiff’s patented technologies. Apple’s training of individuals to be equipped to
handle inquiries concerning the Accused Instrumentalities, and communications from consumers
regarding such Accused Instrumentalities, demonstrate the value of Plaintiff’s patented
technologies. Apple objected to providing a witness to testify responsive to Topic 3 and produced
no documents.
Relief Sought: Order that “Within 2 business days of the date of this Order: (i) Apple is
compelled to fully respond to ROG 3 by identifying and describing the work of each Apple
employee or third party in Texas or WDTX who work in Apple Care, call center(s), or customer
service regarding any Accused Instrumentality, including but not limited to individuals identified

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in Ex. C attached to Plaintiff’s discovery requests; and (ii) Apple must produce documents
responsive to RFP 3. Apple’s objection to Topic 3 is overruled.”
C.

Defendant’s Position

Under Mullen’s interpretation of “Accused Instrumentality,” it would be impossible to
fully respond to these requests, as they purport to seek information regarding any individual in
Texas (whether or not an Apple employee) who “work(s) in Apple Care, call center(s), or customer
service regarding any Accused Instrumentality,” which purports to include all Apple end-user
devices. This request is thus untethered from Mullen’s infringement allegations and Apple’s
objections are proper.
Nonetheless, in order to compromise, Apple is willing to supplement its responses with
regard to the 3 individuals in Exhibit C, within five business days. After receiving these
supplemental responses, Mullen may identify which of these individuals it wishes to depose on
Topic #3, to the extent they are Apple employees.
Relief Sought: Order that “Within five business days of this Order, Apple will identify and
describe the work of each Apple employee identified in Exhibit C, and produce responsive, nonprivileged documents to the extent they exist and are found after a reasonable investigation. After
receiving Apple’s supplemental discovery response, Mullen may which of these individuals it
seeks to depose on Topic #3, to the extent they are Apple employees. Apple’s objections to
interrogatory #3, RFP #3, and Topic #3 are sustained.”
D.

The Court’s Ruling

Plaintiff articulated that it intends to base its damages theory on the amount of support that
Apple dedicates to the Accused Features and based on the fraction of users who request support
for the Accused Features. Because damages require apportionment, this theory is reasonable at an
early stage of this case.
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IT IS HEREBY ORDERED that within 5 business days of the date of this Order: (i)
Apple is compelled to respond to ROG 3 by identifying and describing the work of each Apple
employees or third parties in Texas or WDTX who work in Apple Care, call center(s), or customer
service regarding any Accused Instrumentality, including but not limited to individuals identified
in Ex. C attached to Plaintiff’s discovery requests; and (ii) Apple must produce documents
responsive to RFP 3. To alleviate Apple’s burden of responding for “each” employee, Apple may
respond in a representative manner by 1) identifying, describing, and producing the any training,
instruction manuals, or documents that relate to the Accused Instrumentalities and are used by or
used to train those who work in Apple Care, call centers, or customer service, 2) identifying the
number of responsive employees or third parties in Texas who use or are trained with the materials
in part 1), and 3) identifying, describing, and producing any reports about or employees
knowledgeable of the fraction of work in Apple Care, call center(s), or customer service regarding
any Accused Instrumentality. It is further ORDERED that Apple must respond specifically for
everyone in Exhibit C within 2 business days of this Order.
V. FIFTH ISSUE: DISPUTE OVER INTERROGATORY AND REQUEST FOR
PRODUCTION 4
A.

Discovery at Issue

Interrogatory 4 asks Apple to identify and describe the work of each Apple employee or
third party in Texas or WDTX who perform server-side coding of iCloud, Find My, Find My
Friends, and/or Maps. Request for Production 4 seeks documents regarding the same.
B.

Plaintiff’s Position

Apple did not identify any individuals, instead improperly “reserv[ing] its right to
supplement … at the appropriate time.” Such information is relevant at least to infringement,

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including because certain patent claims are directed to servers or end-user devices capable of
communicating with servers. Apple produced no documents.
Relief Sought: Order that “Within 2 business days of the date of this Order: (i) Apple is
compelled to fully respond to ROG 4 by identifying and describing the work of each Apple
employee or third party in Texas or WDTX on server-side coding of iCloud, Find My, Find My
Friends, and/or Maps; and (ii) Apple must produce documents responsive to RFP 4.”
C.

Defendant’s Position

As Apple explained in its objections and responses to these requests, the Apple employees
who perform the server-side coding of the accused functionalities are not located in Texas.
In an effort to compromise, Apple has investigated and is in the process of supplementing
its responses by identifying the name and location of the individuals responsible for this coding.
Apple will provide this supplement within five business days.
Relief Sought: Order that “Within five business days of this Order, if found after a
reasonable investigation, Apple will identify and describe the work of its employees in the WDTX
who have responsibility for server-side programming of the Find My functionality, and produce
responsive, non-privileged documents to the extent they exist and are found after a reasonable
investigation. Apple’s objections to interrogatory #4 and RFP #4 are sustained.”
D.

The Court’s Ruling

IT IS HEREBY ORDERED that within two business days of this Order, if found after a
reasonable investigation, Apple will identify and describe the work of its employees in the WDTX
who have responsibility for server-side programming of the iCloud, Find My, Find My Friends,
and/or Maps, and produce responsive, non-privileged documents to the extent they exist and are
found after a reasonable investigation.

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If Apple maintains its argument that “the Apple employees who perform the server-side
coding of the accused functionalities are not located in Texas,” then Apple must provide, within 2
business days, a sworn written response that “the Apple employees who perform the server-side
coding of the accused functionalities are not located in Texas” as argued by Apple. Apple must
provide a 30(b)(6) witness on this topic if noticed by Plaintiff for a very short deposition. If Apple
failed to fully investigate the basis of its statement or uses crafty phrases to avoid providing a
meaningful response, then Plaintiff may move for an adverse inference.
VI. SIXTH ISSUE: DISPUTE OVER INTERROGATORY AND REQUEST FOR
PRODUCTION 5
A.

Discovery at Issue

Interrogatory 5 asks Apple to identify and describe all third parties in Texas or WDTX,
including suppliers, who perform services or provide components for Accused Instrumentalities,
including Mac Pro computers, Secure Enclave Processors, GPS chips, WiFi chips, accelerometers,
gyroscopes, etc. Request for Production 5 seeks documents regarding the same. The fifth 30(b)(6)
deposition topic seeks testimony regarding the same.
B.

Plaintiff’s Position

Apple did not identify any third parties, instead improperly “reserv[ing] its right to
supplement … at the appropriate time” and claiming that “Apple is investigating.” Such
information is relevant to infringement and damages. For example, certain asserted claims are
directed to the “positioning systems” (e.g., GPS receivers) in the accused products, which Plaintiff
believes are supplied to Apple by a third party. Apple objected to providing a witness to testify
responsive to Topic 5 and produced no documents.
Relief Sought: “Within 2 business days of the date of this Order: (i) Apple is compelled to
fully respond to ROG 5 by identifying and describing all third parties in Texas or WDTX,

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including suppliers, who perform services or provide components for Accused Instrumentalities,
including Mac Pro computers, Secure Enclave Processors, GPS chips (e.g., receivers), WiFi chips,
accelerometers, gyroscopes, etc.; and (ii) Apple must produce documents responsive to RFP
5. Apple’s objection to Topic 5 is overruled.”
C.

Defendant’s Position

Mullen seeks information that is unbounded by the accused functionalities and thus these
requests are vague, overly broad, unduly burdensome, and not proportional to the needs of the
case.
Further, in this dispute chart Mullen seeks to add “WiFi chips” which were not identified
in its discovery requests.
Nonetheless, in order to compromise, Apple is willing to identify the suppliers of GPS
chips for iPhone, iPad, iPod Touch, and Watch. Additionally, Apple will identify the suppliers
of gyroscopes, magnetometers, and accelerometers for Watch. Apple will serve this supplement
within five days.
Relief Sought: Order that “Within five business days of this Order, Apple will supplement
its interrogatory response to identify the suppliers of GPS chips for iPhone, iPad, iPod Touch, and
Watch. Additionally, Apple will identify the suppliers of gyroscopes, magnetometers, and
accelerometers for Watch, and produce responsive, non-privileged documents to the extent they
exist and are found after a reasonable investigation. Apple’s objections to interrogatory #5, RFP
#5, and Topic #5 are sustained.”
D.

The Court’s Ruling

The Court is of the opinion that Apple should have already provided a substantive response
to this discovery request, at least for the Secure Enclave Processors, GPS chips, accelerometers,
and gyroscopes that are specifically identified.
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IT IS HEREBY ORDERED that within 2 business days of the date of this Order: (i)
Apple is compelled to fully respond to ROG 5 by identifying and describing all third parties in
Texas or WDTX, including suppliers, who perform services or provide components for Accused
Instrumentalities, including Mac Pro computers, Secure Enclave Processors, GPS chips (e.g.,
receivers), WiFi chips, accelerometers, gyroscopes, etc.; and (ii) Apple must produce documents
responsive to RFP 5. Apple’s objection to Topic 5 is overruled.
IT IS FURTHER ORDERED that within 5 business days of the date of this Order: (i)
Apple is compelled to fully respond to ROG 5 by identifying and describing all third parties in
Texas or WDTX, including suppliers, who perform services or provide components for the WiFi
chips and (ii) Apple must produce documents responsive to RFP 5 for the WiFi chips.
VII. SEVENTH ISSUE: DISPUTE OVER REQUEST FOR PRODUCTION 6
A.

Discovery at Issue

Request for Production 6 seeks documents sufficient to show the identity and location of
any data servers and/or data centers within Texas or [WDTX] that store documents related to any
Accused Instrumentality.
B.

Plaintiff’s Position

Apple produced no documents, instead improperly “reserv[ing] its right to supplement its
response to this Request at the appropriate time.” This information is relevant to convenience of
WDTX, including location of and access to relevant evidence.
Relief Sought: “Within 2 business days of the date of this Order, Apple must produce
documents responsive to RFP 6.”

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C.

Defendant’s Position

As Apple explained, after performing a diligent search, Apple can confirm that it has not
found any responsive, non-privileged documents because there are no servers responsive to the
request in Texas.
Relief Sought: “Apple’s objections to RFP #6 are sustained.”
D.

The Court’s Ruling

IT IS HEREBY ORDERED that Apple must provide, within 2 business days, a sworn
written response that “there are no servers responsive to the request in Texas” as argued by Apple.
Apple must provide a 30(b)(6) witness on this topic if noticed by Plaintiff for a very short
deposition. If Apple failed to fully investigate the basis of its statement or uses crafty phrases to
avoid providing a meaningful response, then Plaintiff may move for an adverse inference.
VIII. EIGHTH ISSUE: DISPUTE OVER REQUEST FOR PRODUCTION 10
A.

Discovery at Issue

Request for Production 10 seeks documents sufficient to show how Apple’s servers utilize
Apache Cassandra, for example, for storage and/or processing of user information (e.g., profiles,
logins, passwords, tokens), location information, access rights, or events or notifications regarding
locations.
B.

Plaintiff’s Position

Apple produced no documents, instead improperly “reserv[ing] its right to supplement its
response to this Request at the appropriate time.” This information is relevant to convenience of
WDTX, including location of and access to relevant evidence.
Relief Sought: “Within 2 business days of the date of this Order, Apple must produce
documents responsive to RFP 6.”

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C.

Defendant’s Position

As previously explained, Mullen seeks information that is unbounded by the accused
functionalities and thus these requests are vague, overly broad, unduly burdensome, and not
proportional to the needs of the case. For example, third-party Apache Cassandra software is not
accused of infringement in this case.
Nonetheless, in order to compromise, Apple is willing to supplement its response and
produce responsive documents regarding to the individual in Exhibit D to the extent they exist,
within five business days.
Relief: Order that “Within five business days of this Order, if found after a reasonable
investigation, Apple will produce responsive, non-privileged documents regarding the location and
work responsibilities of the individual in Exhibit D to the extent they exist and are found after a
reasonable investigation. Apple’s objections to RFP #10 are sustained.”
D.

The Court’s Ruling

IT IS HEREBY ORDERED that within 2 business days of the date of this Order, Apple
must produce documents responsive to RFP 10, but only for the exemplary subcategories of
functions specifically identified in RFP 10. Apple is further ORDERED to supplement its
response and produce responsive documents regarding to the individual in Exhibit D to the extent
they exist, within 2 business days.
IX. CONCLUSION
For the foregoing reasons the Court GRANTS-IN-PART and DENIES-IN-PART the
requested discovery relief.
At this early stage of the case, the Court generally defers to the plaintiff on how it intends
to use relevant evidence to prove up its case. For the Court to allow venue discovery, a plaintiff

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need only articulate a reasonable basis for why a witness or evidence might be relevant to this case
and appear at trial.
Burden objections in venue discovery carry little weight when a party knowingly causes
and incurs the burden of venue discovery. This Court’s Order Governing Proceedings protects
defendants from frivolous plaintiffs who seek settlements based not on merit but based on
the burden of discovery. Hence, the Court’s default schedule defers fact discovery until after
the Markman hearing so that parties can cost-effectively reach the first merit milestone in a case.
A defendant who files a transfer motion for convenience opens itself up to the burden of
early venue discovery and discards the opportunity to cost-effectively reach the Markman hearing.
Greenthread, LLC v. Intel Corp., No. 6:22-CV-00105-ADA, 2022 WL 4004781, at *5 (W.D. Tex.
Sept. 1, 2022). The defendant imposes a discovery burden and burden of opposition on the
plaintiff. The defendant burdens the Court with venue discovery disputes and with the burden of
opining on the motion to transfer. A defendant’s argument that venue discovery is
disproportionately burdensome carries little weight when the discovery burden originated from the
defendant’s motion, and when the defendant’s motion imposes far greater burdens on opposing
counsel and on this Court, all for the marginally better convenience of the defendant at trial. A
party that conducts lots of business in Texas can expect to provide a lot of venue discovery
whenever it files a transfer motion.
The OGP has a short venue discovery period. Parties are expected to promptly respond to
discovery requests and promptly raise discovery disputes.
The Court is of the opinion that, at oral argument, Plaintiff generally articulated a narrower
and more reasonable scope of what it seeks in comparison to the language of the discovery
requests. If Plaintiff believes that it does not receive the discovery ordered herein and as articulated

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by Plaintiff during oral argument and after further meeting and conferring with Defendant, then
Plaintiff may move for adverse inferences based on the deficiencies.

SIGNED this 30th day of September, 2022.

ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE

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