Case 2:18-cv-00514-JRG Document 32 Filed 04/01/19 Page 1 of 5 PageID #: 259
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC 2017 LLC,
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`Plaintiff,
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`v.
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`AT&T SERVICES, INC. and AT&T
`MOBILITY LLC,
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`Defendants.
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`Case No. 2:18-cv-00514-JRG
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`Jury Trial Demanded
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`JOINT MOTION FOR ENTRY OF
`PROPOSED DISCOVERY ORDER
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`Pursuant to the Court’s Order of February 26, 2019 (Dkt. 15) Plaintiff Uniloc 2017 LLC
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`(“Uniloc”) and Defendants AT&T Services, Inc. and AT&T Mobility LLC (“AT&T”) hereby
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`jointly submit a Proposed Discovery Order, attached as Exhibit A. The parties have conferred and
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`have agreed to all terms of a proposed Discovery Order except terms regarding:
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`• ¶ 5(b)(i): The number of hours for party depositions; and
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`• ¶ 12(f): The number of prior art references Defendants may identify in connection
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`with the Court’s Model Order Focusing Patent Claims and Prior Art to Reduce Cost
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`(General Order No. 12-20).
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`Accordingly, the parties hereby submit the attached proposed Discovery Order with
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`competing provisions regarding the above topics for consideration by the Court. For ease of
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`reference, the disputed language is indicated in bold italics.
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`Case 2:18-cv-00514-JRG Document 32 Filed 04/01/19 Page 2 of 5 PageID #: 260
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`Plaintiff’s Positions
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`Plaintiff does not believe the parties should be presenting argument, but Defendants refused
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`to submit this statement without argument included.
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`While the parties agree on a 100 hour limit in the aggregate, Defendants’ limit is a false
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`limit because it caps depositions of parties at 40 hours assuming 30(b)(6) deposition hours also
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`count as hours of party employees. Thus, what Defendants are really saying is 40 hours for party
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`depositions and 60 hours for third parties. The Federal Rules do not impose limits on party
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`depositions versus third party depositions and no such division should be adopted here. Given that
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`there are three unrelated patents-in-suit, 100 total hours for fact depositions is reasonable for this
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`case.
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`With respect to prior art references, Defendants seek to chart more prior art references than
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`are permitted in the Court’s Model Order Focusing Patent Claims and Prior Art to Reduce Cost
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`(General Order No. 12-20). Given there are only 13 asserted claims total (which is far less than
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`the 32 claims allowed at the completion of claim construction discovery), there is no reason for
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`Defendants to need additional prior art references than are provided for in the Court’s Model Order.
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`Defendants’ Positions
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`(1) There should be an hours-based limit on party depositions.
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`The parties agree on a 100-hour limit on depositions (which is more than the default limit
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`in the Federal Rules of Civil Procedure). The parties dispute whether there should be a limit on
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`how much of those 100 hours can be used take party depositions. Defendants propose a 15-hour
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`limit on 30(b)(6) depositions of each side and a 40-hours limit on individual depositions of party
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`employees. Although Plaintiff initially proposed imposing an hours-based limit on party
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`depositions, Plaintiff then inexplicably shifted positions and now refuses to agree to any hours-
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`Case 2:18-cv-00514-JRG Document 32 Filed 04/01/19 Page 3 of 5 PageID #: 261
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`based limit on party depositions.1 With no limit, Plaintiff could potentially take up to 100 hours
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`of 30(b)(6) depositions of the AT&T defendants or up to 100 hours of depositions of AT&T
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`employees. This would impose an undue burden on the AT&T defendants.
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`Defendants’ proposed limits are reasonable. Defendants recognize that this patent case
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`involve three patents covering disparate technologies. Thus, rather than limit each side to 7 hours
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`of 30(b)(6) depositions of the other side, Defendants have proposed a higher, 15-hour limit.
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`Likewise, Defendants propose of a limit of 40 hours of individual depositions of party employees.
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`Together, Defendants’ proposal will provide Plaintiff more than 55 hours of depositions of the
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`AT&T defendants, giving Plaintiff more than ample opportunity to take discovery of Defendants.
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`(2)
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`Defendants request a modest expansion in the number of prior art reference
`allowed under Court’s Model Order Focusing Patent Claims and Prior Art to
`Reduce Cost (General Order No. 12-20).
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`The Court’s Model Order Focusing Patent Claims and Prior Art to Reduce Cost (General
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`Order No. 12-20) imposes limits on the number of prior art reference on which Defendants may
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`rely at different stages of the case. Paragraph 2 sets a limit at the claim construction stage of the
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`case, and that limit is twelve prior art references per patent. Paragraph 3 sets a limit at the expert
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`report stage of the case, and that limit is six prior art references per patent. Defendants requests
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`that the limit in Paragraph 2 be expanded from twelve to sixteen references per patent and that the
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`limit in Paragraph 3 be expanded from six to ten references per patent.2
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`1 Plaintiff’s draft proposal provided for an hours limit and included blank spaces for the
`specific numbers, but Plaintiff did not fill in the blanks before sending its draft to Defendants.
`When Defendants responded with a specific proposal for an hours limit, rather than negotiate as
`to the specific number of hours that would be appropriate for this case, Plaintiff simply backed
`away from the concept of an hours limit entirely.
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`2 To accommodate these per-patent limits, Defendants also request an expansion of the
`limit on the total number of prior art references. Given the disparate technology in the three
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`Case 2:18-cv-00514-JRG Document 32 Filed 04/01/19 Page 4 of 5 PageID #: 262
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`The Court’s Model Rule contemplates that the proposed limits may be expanded in
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`situations such as this case. Footnote 1 of the Model Rule states, “In cases involving several patent
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`families, diverse technologies, disparate claims within a patent, or other unique circumstances,
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`absent agreement of the parties, the court will consider flexibly whether circumstances warrant
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`expanding the limits on asserted claims or prior art references.” In this case, the three asserted
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`patents are not related. The patents are from three different patent families. Moreover, the patents
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`cover disparate technology. See Dkt. No. 1, Exs. A, B, and C. As Plaintiff states in its Complaint,
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`the ‘272 Patent is directed to “user interfaces for remote control of portable terminals,” Dkt. 1 at
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`¶ 15; the ‘005 Patent is directed to “digital video compression” and “motion estimation,” Dkt. 1 at
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`¶ 35; and the ‘676 Patent is directed to a method of allowing two radio interface standards to use
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`the same frequency band, Dkt. 1 at ¶ 56. Adding to the complexity of this case, Plaintiff is
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`asserting multiple independent claims for two of the three asserted patents. Given the different
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`patent families, disparate technologies, and Plaintiff’s assertion of multiple independent claims for
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`two of the patents, Defendants request a modest expansion in the number of prior art reference
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`allowed under Court’s Model Order Focusing Patent Claims and Prior Art to Reduce Cost (General
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`Order No. 12-20).
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`asserted patents, Defendants does not anticipate any overlapping prior art between the three
`patents.
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`Case 2:18-cv-00514-JRG Document 32 Filed 04/01/19 Page 5 of 5 PageID #: 263
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`April 1, 2019
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`Respectfully submitted,
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`/s/ M. Elizabeth Day
`M. Elizabeth Day (CA SBN 177125)
`Admitted to Practice in Texas
`eday@feinday.com
`David Alberti
`dalberti@feinday.com
`Sal Lim
`slim@feinday.com
`Marc Belloli
`mbelloli@feinday.com
`FEINBERG DAY ALBERTI LIM &
`BELLOLI LLP
`1600 El Camino Real, Suite 280
`Menlo Park, CA 94025
`Tel: 650 618-4360
`Fax: 650 618-4368
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`Attorneys for Plaintiff
`Uniloc 2017 LLC
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`/s/ Jeffrey D. Baxter
`Timothy Durst
`Tim.durst@bakerbotts.com
`Brian D. Johnston
`Brian.johnston@bakerbotts.com
`Jeffrey D. Baxter
`Jeff.baxter@bakerbotts.com
`BAKER BOTTS LLP
`2001 Ross Avenue, Suite 1100
`Dallas, TX. 75201
`
`Michelle J. Eber
`michelle.eber@bakerbotts.com
`BAKER BOTTS LLP
`One Shell Plaza
`910 Louisiana Street
`Houston, TX 77002-4995
`Telephone: (713) 229-1234
`Facsimile: (713) 229-1522
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`Jon Swenson
`Jon.swenson@bakerbotts.com
`Bryant C. Boren, Jr.
`Bryant.c.boren@bakerbotts.com
`BAKER BOTTS LLP
`1001 Page Mill Rd.,
`Building One, Suite 200
`Palo Alto, CA 94304
`Telephone: (650) 739-7500
`Facsimile: (650) 739-7699
`Deron R. Dacus
`ddacus@dacusfirm.com
`The Dacus Firm, P.C.
`821 ESE Loop 323, Suite 430,Tyler
`Texas 75701
`903/705-1117
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`Attorneys for Defendant
`AT&T Services, Inc. and AT&T Mobility
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