Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 1 of 12 PageID #: 232
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Plaintiff,
`
`CLEAR IMAGING RESEARCH, LLC
`
`
`v.
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO. LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`
`Civil Action No. 2:19-cv-326
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`DISCOVERY ORDER
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(1), 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 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 with the
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Plaintiff,
`
`CLEAR IMAGING RESEARCH, LLC
`
`
`v.
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO. LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`
`Civil Action No. 2:19-cv-326
`
`JURY TRIAL DEMANDED
`
`Defendants.
`
`DISCOVERY ORDER
`
`After a review of the pleaded claims and defenses in this action, in furtherance of the
`
`management of the Court’s docket under Federal Rule of Civil Procedure 16, and after receiving
`
`the input of the parties to this action, it is ORDERED AS FOLLOWS:
`
`1.
`
`Initial Disclosures. In lieu of the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(1), 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 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 with the
`
`
`
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 2 of 12 PageID #: 233
`
`
`
`case, and a brief, fair summary of the substance of the information known by any
`
`such person;
`
`(e)
`
`any indemnity and insuring agreements under which any person or entity carrying
`
`on an insurance business 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;
`
`(f)
`
`(g)
`
`any settlement agreements relevant to the subject matter of this action; and
`
`any statement of any party to the litigation.
`
`2.
`
`Disclosure of Expert Testimony. A party must disclose to the other parties the identity
`
`of any witness it may use at trial to present evidence under Federal Rule of Evidence 702,
`
`703 or 705, and:
`
`(a)
`
`if the witness is one retained or specially employed to provide expert testimony in
`
`the case or one whose duties as the party’s employee regularly involve giving
`
`expert testimony, provide the disclosures required by Federal Rule of Civil
`
`Procedure 26(a)(2)(B) and Local Rule CV-26; and
`
`(b)
`
`for all other such witnesses, provide the disclosure required by Federal Rule of
`
`Civil Procedure 26(a)(2)(C).
`
`3.
`
`Additional Disclosures. Without awaiting a discovery request,1 each party will make the
`
`following disclosures to every other party:
`
`(a)
`
`provide the disclosures required by the Patent Rules for the Eastern District of
`
`Texas with the following modifications to P.R. 3-1 and P.R. 3-3:
`
`
`1 The Court anticipates that this disclosure requirement will obviate the need for requests
`for production.
`
`
`
`- 2 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 3 of 12 PageID #: 234
`
`
`
`i.
`
`If a party claiming patent infringement asserts that a claim element is a
`
`software limitation, the party need not comply with P.R. 3-1 for those
`
`claim elements until 30 days after source code for each Accused
`
`Instrumentality is produced by the opposing party. Thereafter, the party
`
`claiming patent infringement shall identify, on an element-by-element
`
`basis for each asserted claim, what source code of each Accused
`
`Instrumentality allegedly satisfies the software limitations of the asserted
`
`claim elements.
`
`ii.
`
`If a party claiming patent infringement exercises the provisions of
`
`Paragraph 3(a)(i) of this Discovery Order, the party opposing a claim of
`
`patent infringement may serve, not later than 30 days after receipt of a
`
`Paragraph 3(a)(i) disclosure, supplemental “Invalidity Contentions” that
`
`amend only those claim elements identified as software limitations by the
`
`party claiming patent infringement.
`
`(b)
`
`produce or permit the inspection of all documents, electronically stored
`
`information, and tangible things in the possession, custody, or control of the party
`
`that are relevant to the pleaded claims or defenses involved in this action, except
`
`to the extent these disclosures are affected by the time limits set forth in the Patent
`
`Rules for the Eastern District of Texas; and
`
`(c)
`
`provide a complete computation of any category of damages claimed by any party
`
`to the action, and produce or permit the inspection of documents or other
`
`evidentiary material on which such computation is based, including materials
`
`bearing on the nature and extent of injuries suffered, except that the disclosure of
`
`
`
`- 3 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 4 of 12 PageID #: 235
`
`
`
`the computation of damages may be deferred until the time for Expert Disclosures
`
`if a party will rely on a damages expert.
`
`4.
`
`5.
`
`Protective Orders. The Court will enter the parties’ Agreed Protective Order.
`
`Discovery Limitations. The discovery in this cause is limited to the disclosures
`
`described in Paragraphs 1-3 together with:
`
`(a)
`
`(b)
`
`Interrogatories: Twenty-five (25) interrogatories per side.2
`
`Requests for Admission: Each side may serve up to twenty-five (25) requests for
`
`admission. There is no limit on the number of requests for admission the parties
`
`may serve to establish the authenticity of documents. Requests for Admission
`
`directed to document authentication shall be clearly denoted as such, and shall be
`
`served separately from any requests for admission subject to the numerical
`
`limitations above. The parties shall work together in good faith to agree on a
`
`stipulation as to the authenticity of their own documents to avoid the service of
`
`large numbers of requests for admission relating to authenticity.
`
`(c)
`
`Testifying Expert Witnesses: Each side is entitled to up to six (6) testifying
`
`expert witnesses. Any party can move the court for an additional expert upon a
`
`showing of good cause.
`
`(d)
`
`Depositions (non-expert):
`
`a. Each side shall be allowed up to 85 hours of fact discovery deposition time,
`
`including a total of 8 depositions of Rule 30(b)(1) party-witnesses (e.g., party
`
`employees). These hour limits shall include third party witnesses (Para. 5(f))
`
`and shall not include expert deposition time. Depositions on written questions
`
`
`2 “Side” means a party or a group of parties with a common interest.
`
`
`
`- 4 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 5 of 12 PageID #: 236
`
`
`
`do not count toward the above limits. The parties shall act reasonably and in
`
`good faith to schedule depositions expeditiously, while accommodating the
`
`schedules of counsel and witnesses. The parties further agree to discuss in
`
`good faith reasonable expansions of these limits to the extent a party believes
`
`additional fact witness deposition time becomes necessary. Except as set forth
`
`expressly below, each fact deposition shall be limited to no more than 1 day of
`
`7 hours on the record.
`
`i. Deposition of named inventor. Notwithstanding the foregoing, to the
`
`extent Plaintiff designates Dr. Fatih Ozluturk as a corporate designee
`
`witness under Rule 30(b)(6), the Samsung Defendants shall be entitled
`
`to take a 2-day deposition of Dr. Ozluturk of up to 7 hours each day:
`
`the first day shall be in his individual capacity and the second day in
`
`his capacity as a corporate designee witness under Rule 30(b)(6). For
`
`avoidance of doubt, the two days of deposition testimony need not be
`
`consecutive and may take place at different times during the fact
`
`discovery period.
`
`(e)
`
`Expert Depositions: Each expert can be deposed for up to 7 hours for each
`
`substantive issue (e.g., infringement, invalidity, or damages) on which the expert
`
`has offered an opinion. For example, an expert providing reports regarding
`
`infringement and validity may be deposed for 14 hours. Experts, however, shall
`
`not be deposed for more than 7 hours in one day as set forth in Rule 30(d)(1)
`
`unless otherwise agreed to by the parties.
`
`(f)
`
`Third-Party Discovery:
`
`
`
`- 5 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 6 of 12 PageID #: 237
`
`
`
`a. Document Subpoenas and Depositions on Written Questions on Third-Parties:
`
`Subject to the above limitation on deposition hours, the parties may serve a
`
`reasonable number of document and/or deposition subpoenas on third parties.
`
`The parties may also serve depositions upon written questions on third parties
`
`pursuant to Fed. R. Civ. P. 31, as well as depositions on written questions of
`
`custodians of business records for third parties.
`
`b. With respect to third-party discovery, the parties agree to produce documents
`
`within seven (7) days of receipt of the documents from the third party. In
`
`addition, the parties agree to work with each other in scheduling third-party
`
`depositions and will cooperate to ensure that, to the extent practicable, a third-
`
`party deposition is scheduled at least seven (7) days after the party scheduling
`
`the deposition provides the other party with copies of any documents received
`
`from that third party.
`
`(g)
`
`Representative Products: The parties shall discuss in good faith the feasibility of
`
`a stipulation as to representative products in order to streamline the case for
`
`discovery and trial. No party shall argue that this provision constitutes an
`
`agreement or finding that a stipulation regarding representative products is
`
`necessarily appropriate or feasible in this particular case.
`
`Any party may later move to modify these limitations for good cause.
`
`6.
`
`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 Status Conference. By the deadline set in the Docket
`
`Control Order, the parties shall exchange privilege logs identifying the documents or
`
`
`
`- 6 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 7 of 12 PageID #: 238
`
`
`
`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. Any party may move the Court for an
`
`order compelling the production of any documents or information identified on any other
`
`party’s privilege log. If such a motion is made, the party asserting privilege shall respond
`
`to the motion within the time period provided by Local Rule CV-7. The party asserting
`
`privilege shall then file with the Court within 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.
`
`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. If feasible, counsel shall meet to exchange disclosures required by this Order;
`
`otherwise, such disclosures shall be served as provided by Federal Rule of Civil
`
`Procedure 5. The parties shall promptly file a notice with the Court that the disclosures
`
`required under this Order have taken place.
`
`8.
`
`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.
`
`9.
`
`Discovery Disputes.
`
`
`
`- 7 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 8 of 12 PageID #: 239
`
`
`
`(a)
`
`Except in cases involving claims of privilege, any party entitled to receive
`
`disclosures (“Requesting Party”) may, after the deadline for making disclosures,
`
`serve upon a party required to make disclosures (“Responding Party”) a written
`
`statement, in letter form or otherwise, of any reason why the Requesting Party
`
`believes that the Responding Party’s disclosures are insufficient. The written
`
`statement shall list, by category, the items the Requesting Party contends should
`
`be produced. The parties shall promptly meet and confer. If the parties are
`
`unable to resolve their dispute, then the Responding Party shall, within 14 days
`
`after service of the written statement upon it, serve upon the Requesting Party a
`
`written statement, in letter form or otherwise, which identifies (1) the requested
`
`items that will be disclosed, if any, and (2) the reasons why any requested items
`
`will not be disclosed. The Requesting Party may thereafter file a motion to
`
`compel.
`
`(b)
`
`An opposed discovery related motion, or any response thereto, shall not exceed 7
`
`pages. Attachments to a discovery related motion, or a response thereto, shall not
`
`exceed 5 pages. No further briefing is allowed absent a request or order from the
`
`Court.
`
`(c)
`
`Prior to filing any discovery related motion, the parties must fully comply with
`
`the substantive and procedural conference requirements of Local Rule CV-7(h)
`
`and (i). Within 72 hours of the Court setting any discovery motion for a hearing,
`
`each party’s lead attorney (see Local Rule CV-11(a)) and local counsel shall meet
`
`and confer in person or by telephone, without the involvement or participation of
`
`other attorneys, in an effort to resolve the dispute without Court intervention.
`
`
`
`- 8 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 9 of 12 PageID #: 240
`
`
`
`(d)
`
`Counsel shall promptly notify the Court of the results of that meeting by filing a
`
`joint report of no more than two pages. Unless excused by the Court, each party’s
`
`lead attorney shall attend any discovery motion hearing set by the Court (though
`
`the lead attorney is not required to argue the motion).
`
`(e)
`
`Any change to a party’s lead attorney designation must be accomplished by
`
`motion and order.
`
`(f)
`
`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).
`
`
`
`10.
`
`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.
`
`11.
`
`Filings. Only upon request from chambers shall counsel submit to the court courtesy
`
`copies of any filings.
`
`12.
`
`Proposed Stipulations by the Parties Regarding Discovery.
`
`(a)
`
`Privilege. No party is required to include in a privilege log documents created
`
`after October 1, 2019. In addition, the Samsung Defendants are not required to
`
`log privileged communications with its outside counsel in this matter and Clear
`
`Imaging is not required to log privileged communications with its outside counsel
`
`in this matter, McKool Smith (litigation) or Volpe and Koenig (prosecution).
`
`
`
`- 9 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 10 of 12 PageID #: 241
`
`
`
`(b)
`
`Production of ESI. Compliance with the Court’s disclosure obligations shall
`
`include e-mail or other forms of electronic correspondence (collectively “e-mail”)
`
`only to the extent necessary to sufficiently meet those obligations. Regardless,
`
`the parties shall propose a separate order providing stipulations regarding
`
`production of electronically stored data, including e-mails.
`
`(c) Electronic Service. The Parties shall serve documents, pleadings, correspondence
`
`and other things electronically in lieu of service by U.S. Mail to the following
`
`respective addresses:
`
` FRService-Samsung-Clear@fr.com
`
`for
`
`the Samsung
`
`Defendants; ClearImaging_Counsel@McKoolSmith.com for Plaintiff Clear Imaging.
`
`If the document, pleading, correspondence or other item is too large to be served
`
`electronically, then a cover letter or other similar notification shall be served
`
`electronically, and the document, pleading, correspondence or other item shall be
`
`served via FTP, if possible, or next day delivery.
`
`(d)
`
`Expert Discovery:
`
`a. The parties further agree that testifying expert’s drafts reports, notes, and
`
`outlines of draft reports shall not be subject to discovery in this case, nor shall
`
`any such drafts, notes, or outlines of draft reports that the testifying expert
`
`prepared in other cases be subject to discovery in this case. Discovery of
`
`materials provided to testifying experts shall be limited to those materials,
`
`facts, consulting expert opinions, and other matters actually relied upon by the
`
`testifying expert in forming his or her final report, trial or deposition
`
`testimony, or any opinion in this case. No conversations or communications
`
`between counsel and any testifying or consulting expert will be subject to
`
`
`
`- 10 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 11 of 12 PageID #: 242
`
`
`
`discovery unless the conversations or communications are relied upon by such
`
`experts in formulating opinions that are presented in reports, trial or
`
`deposition testimony in this case. Materials, communications (including e-
`
`mail), and other information exempt from discovery under this paragraph shall
`
`be treated as attorney-work product for the purposes of this litigation. This
`
`provision does not change the existing protections for expert discovery and
`
`exceptions thereto set forth in Fed. R. Civ. P. 26(b)(4).
`
`b. Non-testifying experts shall not be subject to discovery, except to the extent a
`
`testifying expert is relying on the work or opinions of a non-testifying expert.
`
`In that event, discovery can be taken from the non-testifying expert with the
`
`same limitations that apply to testifying experts, but discovery shall be limited
`
`to the information provided to and relied upon by the testifying expert and the
`
`basis for such information.
`
`(e)
`
`Inadvertent Production. Nothing in this Order shall require production of
`
`documents, information or other material that a Party contends is protected from
`
`disclosure by the attorney-client privilege, the work product doctrine, or other
`
`privilege, doctrine, or immunity. If documents, information or other material
`
`subject to a claim of attorney-client privilege, work product doctrine, or other
`
`privilege, doctrine, or immunity is inadvertently or unintentionally produced, such
`
`production shall in no way prejudice or otherwise constitute a waiver of, or
`
`estoppel as to, any such privilege, doctrine, or immunity. Any Party that
`
`inadvertently or unintentionally produces documents, information or other
`
`material it reasonably believes are protected under the attorney-client privilege,
`
`
`
`- 11 -
`
`
`
`Case 2:19-cv-00326-JRG Document 34 Filed 02/18/20 Page 12 of 12 PageID #: 243
`
`
`
`work product doctrine, or other privilege, doctrine, or immunity may request
`
`destruction of such documents, information or other material by promptly
`
`notifying the recipient(s) and providing a privilege log for the inadvertently or
`
`unintentionally produced documents,
`
`information or other material. The
`
`recipient(s) shall destroy all copies of such documents, information or other
`
`material to the producing Party. This Order constitutes a Federal Rule of Evidence
`
`502(d) order, establishing that any inadvertently produced material subject to the
`
`attorney-client privilege or work product immunity is not a waiver.
`
`13.
`
`Standing Orders. The parties and counsel are charged with notice of and are required to
`
`fully comply with each of the Standing Orders of this Court. Such are posted on the
`
`Court’s website at http://www.txed.uscourts.gov/?q=court-annexed-mediation-plan. The
`
`substance of some such orders may be included expressly within this Discovery Order,
`
`while others (including the Court’s Standing Order Regarding Protection of Proprietary
`
`and/or Confidential Information to Be Presented to the Court During Motion and Trial
`
`Practice) are incorporated herein by reference. All such standing orders shall be binding
`
`on the parties and counsel, regardless of whether they are expressly included herein or
`
`made a part hereof by reference.
`
`
`
`
`
`
`
`- 12 -
`
`.
`
`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
`
`So ORDERED and SIGNED this 18th day of February, 2020.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
