Message: Exactly 1 year ago. "End Game for e.Digital"
VII. DISCOVERY
A. STATUS OF DISCOVERY
Pursuant to FRCP 26(f), the Parties have met and conferred regarding various discovery
issues. The Parties exchanged initial disclosures on March 23, 2016. No other discovery has
been exchanged or propounded.
B. DISCOVERY PLAN PURSUANT TO FRCP 26(f)(3)
Pursuant to FRCP 26(f), the Parties submit the following plan:
1. Initial Disclosures (FRCP 26(f)(3)(A))
The Parties exchanged initial disclosures on March 23, 2016.
2. Subject Matter On Which Discovery Will Be Needed (FRCP 26(f)(3)(B))
The Parties intend to propound written discovery in the form of interrogatories, requests
for production, and requests for admissions. The Parties also intend to conduct depositions of
each other and may also take the depositions of certain third parties.
a. Plaintiff
Plaintiff will seek discovery of the following matters:
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
5
(1) Typical patent infringement discovery, including without limitation, the identity of
the accused products and the design, structure, function, operation and use of the
accused products. Such information may include, without limitation, supplier,
manufacturer and/or contractor information, downstream distributor and/or
customer information, specifications, drawings, designs, machine code, source
code, and firmware or software functionality, together with their associated
documentation;
(2) Damages, including without limitation, sales and other financial information
relating to the accused products. Such information may include, without
limitation, patent licenses, distributor and customer information, revenue, cost and
expense information related to the accused products;
(3) Defendant’s knowledge of and efforts to avoid infringement of the patents-in-suit,
including but not limited to internal and third-party communications related
thereto;
(4) Purported invalidity of the patents-in-suit based on 35 U.S.C. §§ 102, 103, and/or
112; the purported prior art; and the conception, reduction to practice, and
publication of the purported prior art; and,
(5) The basis for any and all affirmative defenses and/or invalidity contentions
asserted by Defendant in this matter.
Plaintiff reserves the right to amend these subjects pending discovery in this matter.
b. Defendant
Defendant will seek discovery relating to each of Plaintiff's allegations in the Complaint
and to Defendant’s defenses. At this time, Defendant anticipates discovery may be needed on at
least the following topics, including, but not limited to:
(1) The Asserted Patents, including, but not limited to prior art, invalidity analyses,
conception, reduction to practice, prosecution history, assignment history and
ownership, and alleged infringement analyses;
(2) Plaintiff’s licenses of the Asserted Patents and the practices of the licensees that
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
6
allegedly embody the Asserted Patents;
(3) Plaintiff’s relationships and actions with manufacturers, suppliers, and customers
of products alleged to embody the Asserted Patents;
(4) Plaintiff’s correspondence with manufacturers, suppliers and customers of
products alleged to embody the Asserted Patents;
(5) Plaintiff’s cease and desist or demand correspondence regarding the Asserted
Patents; and
(6) Plaintiff’s allegations of damages, including, but not limited to license agreements,
royalties, market conditions, and profits.
Defendant reserves the right to amend this section pending further discovery.
3. Electronically Stored Information (FRCP 26(f)(3)(C))
The Parties have agreed to work cooperatively regarding the exchange of electronically
stored information (“ESI”), and will produce the information in mutually agreed convenient
formats. The Parties have agreed to ask the Court to adopt, with some minor modifications, the
Model Stipulation & Order Re: Discovery Of Electronically Stored Information For Patent
Litigation, a copy of which will be submitted to the Court when a final agreement is reached. To
the extent that the Model Stipulation & Order conflicts with any portion of this provision, the
parties agree that this provision shall control.
In addition, the Parties agree as follows:
The Parties will initially produce basic documentation about the Asserted Patents and the
accused instrumentalities. Thereafter, the Parties shall meet and confer to develop a list of
custodians and search terms with which the Parties will conduct the custodial searches.
The Parties agree to search central repositories, including central databases, or relevant
portions thereof using the same search terms to the extent that the party reasonably anticipates
they contain non-duplicative responsive documents.
Regarding the production of ESI, the Parties agree that they will produce such information
in an organized manner on CD, DVD or the like, or by FTP. Each piece of production media
shall identify a production number corresponding to the production volume (e.g., “VOL001”,
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
7
“VOL002”), as well as the volume of the material in that production (e.g. “-001”, “-002”). Each
piece of production media shall also identify: (1) the producing party’s name; (2) the production
date; and (3) the Bates Number range of the materials contained on the production media.
ESI shall be produced as single page TIFFs with appropriate load files (i.e., .DAT, .OPT
and .LOG files). The Parties agree that they will provide or make available certain documents
natively upon reasonable request by the receiving party.
Responsive documents in TIFF format will be stamped with the appropriate
confidentiality designations in accordance with any protective order(s) entered in this matter.
Each TIFF file should be one page, named according to the corresponding Bates Number
associated with the document. To the extent feasible, each responsive document produced in
native format will have its confidentiality designation identified in the filename of the native file.
Source code will be produced in accordance with the protective order(s) entered in this matter.
The Parties agree that the search terms will not be applied to source code.
A party is only required to produce a single copy of a responsive document and a party
may de-duplicate responsive ESI (based on MD5 or SHA-1 hash values at the document level)
across Custodians.
The Parties identify the following accessible and inaccessible ESI as to the Parties:
a. Accessible ESI: Reasonably accessible sources of ESI include electronic
documents stored on computer networks, hard drives, shared network drives, workstation or
laptop hard drives, and portable drives/media, including external hard drives, zip drives, CDROM
and DVD-ROM disks, and USB Flash Drives/Jump Drives. Each Party will conduct a
reasonably diligent search of those reasonably accessible sources in which it has reason to believe
relevant, non-duplicative ESI responsive to discovery requests will be found.
b. Inaccessible ESI: Contingent on each Party’s compliance with the
obligations set forth in Paragraph 3(a) above, the Parties agree that the circumstances of this case
do not warrant the preservation, review, or production of ESI that is not reasonably accessible
because it is unlikely that significant relevant information would be located in those sources,
which is not otherwise available from reasonably accessible sources. Moreover, the remote
8
possibility is substantially outweighed by the burden and cost of preservation and/or review and
production of ESI from such sources. The Parties further agree that the following types of ESI are
not reasonably accessible:
• Backup tapes and archive media: Plaintiff asserts that backup tapes and archive
media created before the date of the filing of the Complaint are inaccessible.
• Voicemail;
• Instant messaging and text messaging;
• Legacy data;
• Residual, fragmented, damaged, permanently deleted slack and unallocated data;
• Data residing on mobile telephones and handheld PDA-type devices;
• Metadata;
• Offline archived data; and
• Customer data that may be stored on Defendant’s system.
4. Privilege Issues (FRCP 26(f))(3)(D))
The Parties have agreed that attorney-client communications and work product will be
asserted on a document-by-document basis. The Parties agree and propose that privileged
communications and work product occurring after the filing of the Complaint in this matter need
not be listed in a privilege log.
The Parties shall have the right to claw back inadvertently produced privileged or workproduct
documents and agree to the following protocol:
Pursuant to Fed. R. Evid. 502(d), the production of a privileged or work-product-protected
document(s) that are inadvertently provided is not a waiver of privilege or protection from
discovery in this case or in any other federal or state proceeding. Inadvertence is established
where a party makes a good faith representation, in writing to the receiving party, that such
production was inadvertent or mistaken. For example, the mere production of privileged or workproduct-
protected documents in this case as part of a mass production is not itself a waiver. A
producing party may assert privilege or protection over produced documents at any time by
notifying the receiving party in writing of the assertion of privilege or protection. In addition,
9
information that contains privileged matter or work product shall be returned if such information
appears on its face to have been inadvertently produced, or if requested. Nothing contained in
this Paragraph 4 is intended to or shall serve to limit a party’s right to conduct a review of
documents, ESI, or information (including metadata) for relevance, responsiveness, and/or
segregation of privileged and/or protected information before production.
5. Discovery Limitations (FRCP 26(f)(3)(E))
The Parties do not believe that there should be any limitations to discovery other than
those set forth in the Federal Rules of Civil Procedure, the Local Rules, the Patent Local Rules,
and the Orders of this Court except as noted below:
The Parties agree that the limits on depositions set forth in the Federal Rules of Civil
Procedure shall govern depositions, except that, for each expert report served by an expert
witness, the Parties will be permitted one day of seven hours to depose said expert witness. By
way of example, if a party designates a single expert to testify on the separate issues of
infringement and invalidity, the opposing party will be permitted to depose that expert for one day
of seven hours on each respective issue. The Parties will make every effort to minimize the
expense of discovery as appropriate.
6. Other Orders (FRCP 26(f)(3)(F))
The Parties agree that a protective order is necessary for the disclosure of certain
confidential and proprietary business and financial information. The Parties will work together to
reach agreement and, upon agreement, will submit a Stipulated Protective Order to the Court for
adoption at a later date.
C. OTHER DISCOVERY MATTERS
The Parties agree to accept service of documents via email.
The Parties will work together (and no party should be permitted to have the unilateral
right) to attempt to identify representative products in order to streamline (a) discovery; and (b)
the trial of this matter. The Parties further agree, and ask the Court to order, that the Parties may
modify the discovery limitations by consent of all Parties without requiring express authorization
from the Court. In the event that a Party seeks discovery beyond the limitations set forth herein
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
10
and the other Party does not consent, the Party seeking discovery beyond said limitations may
seek relief from the Court in compliance with the Local Rules, and upon a showing of good cause
for modification of the discovery limits.
VIII. CLASS ACTIONS
This matter is not a class action case.
IX. RELATED CASES
The Parties identify the following related pending cases or proceedings, all of which are
currently pending:
• e.Digital v. ArcSoft, S.D.Cal. Case No. 3:15-cv-56-BEN-DHB
• e.Digital v. Ivideon, N.D.Cal. Case No. 3:15-cv-691-JST
• e.Digital v. iBaby, Inc., N.D.Cal. Case No. 3:15-cv-5790-JST
X. RELIEF
Plaintiff prays for relief and judgment as follows:
(1) That Defendant be declared to have infringed the Asserted Patents;
(2) That Defendant, Defendant’s officers, agents, servants, employees, and
attorneys, and those persons in active concert or participation with them, be
preliminarily and permanently enjoined from infringement of the Asserted
Patents, including but not limited to any making, using, offering for sale,
selling, or importing of unlicensed infringing products within and without
the United States;
(3) Compensation for all damages caused by Defendant’s infringement of the
Asserted Patents to be determined at trial;
(4) A finding that this case is exceptional and an award of reasonable attorneys
fees pursuant to 35 U.S.C. § 285;
(5) Granting Plaintiff pre-and post-judgment interest on its damages, together
with all costs and expenses; and,
(6) Awarding such other relief as this Court may deem just and proper.
Plaintiff will base its claim for damages on a reasonable royalty to be established through
A. STATUS OF DISCOVERY
Pursuant to FRCP 26(f), the Parties have met and conferred regarding various discovery
issues. The Parties exchanged initial disclosures on March 23, 2016. No other discovery has
been exchanged or propounded.
B. DISCOVERY PLAN PURSUANT TO FRCP 26(f)(3)
Pursuant to FRCP 26(f), the Parties submit the following plan:
1. Initial Disclosures (FRCP 26(f)(3)(A))
The Parties exchanged initial disclosures on March 23, 2016.
2. Subject Matter On Which Discovery Will Be Needed (FRCP 26(f)(3)(B))
The Parties intend to propound written discovery in the form of interrogatories, requests
for production, and requests for admissions. The Parties also intend to conduct depositions of
each other and may also take the depositions of certain third parties.
a. Plaintiff
Plaintiff will seek discovery of the following matters:
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
5
(1) Typical patent infringement discovery, including without limitation, the identity of
the accused products and the design, structure, function, operation and use of the
accused products. Such information may include, without limitation, supplier,
manufacturer and/or contractor information, downstream distributor and/or
customer information, specifications, drawings, designs, machine code, source
code, and firmware or software functionality, together with their associated
documentation;
(2) Damages, including without limitation, sales and other financial information
relating to the accused products. Such information may include, without
limitation, patent licenses, distributor and customer information, revenue, cost and
expense information related to the accused products;
(3) Defendant’s knowledge of and efforts to avoid infringement of the patents-in-suit,
including but not limited to internal and third-party communications related
thereto;
(4) Purported invalidity of the patents-in-suit based on 35 U.S.C. §§ 102, 103, and/or
112; the purported prior art; and the conception, reduction to practice, and
publication of the purported prior art; and,
(5) The basis for any and all affirmative defenses and/or invalidity contentions
asserted by Defendant in this matter.
Plaintiff reserves the right to amend these subjects pending discovery in this matter.
b. Defendant
Defendant will seek discovery relating to each of Plaintiff's allegations in the Complaint
and to Defendant’s defenses. At this time, Defendant anticipates discovery may be needed on at
least the following topics, including, but not limited to:
(1) The Asserted Patents, including, but not limited to prior art, invalidity analyses,
conception, reduction to practice, prosecution history, assignment history and
ownership, and alleged infringement analyses;
(2) Plaintiff’s licenses of the Asserted Patents and the practices of the licensees that
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
6
allegedly embody the Asserted Patents;
(3) Plaintiff’s relationships and actions with manufacturers, suppliers, and customers
of products alleged to embody the Asserted Patents;
(4) Plaintiff’s correspondence with manufacturers, suppliers and customers of
products alleged to embody the Asserted Patents;
(5) Plaintiff’s cease and desist or demand correspondence regarding the Asserted
Patents; and
(6) Plaintiff’s allegations of damages, including, but not limited to license agreements,
royalties, market conditions, and profits.
Defendant reserves the right to amend this section pending further discovery.
3. Electronically Stored Information (FRCP 26(f)(3)(C))
The Parties have agreed to work cooperatively regarding the exchange of electronically
stored information (“ESI”), and will produce the information in mutually agreed convenient
formats. The Parties have agreed to ask the Court to adopt, with some minor modifications, the
Model Stipulation & Order Re: Discovery Of Electronically Stored Information For Patent
Litigation, a copy of which will be submitted to the Court when a final agreement is reached. To
the extent that the Model Stipulation & Order conflicts with any portion of this provision, the
parties agree that this provision shall control.
In addition, the Parties agree as follows:
The Parties will initially produce basic documentation about the Asserted Patents and the
accused instrumentalities. Thereafter, the Parties shall meet and confer to develop a list of
custodians and search terms with which the Parties will conduct the custodial searches.
The Parties agree to search central repositories, including central databases, or relevant
portions thereof using the same search terms to the extent that the party reasonably anticipates
they contain non-duplicative responsive documents.
Regarding the production of ESI, the Parties agree that they will produce such information
in an organized manner on CD, DVD or the like, or by FTP. Each piece of production media
shall identify a production number corresponding to the production volume (e.g., “VOL001”,
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
7
“VOL002”), as well as the volume of the material in that production (e.g. “-001”, “-002”). Each
piece of production media shall also identify: (1) the producing party’s name; (2) the production
date; and (3) the Bates Number range of the materials contained on the production media.
ESI shall be produced as single page TIFFs with appropriate load files (i.e., .DAT, .OPT
and .LOG files). The Parties agree that they will provide or make available certain documents
natively upon reasonable request by the receiving party.
Responsive documents in TIFF format will be stamped with the appropriate
confidentiality designations in accordance with any protective order(s) entered in this matter.
Each TIFF file should be one page, named according to the corresponding Bates Number
associated with the document. To the extent feasible, each responsive document produced in
native format will have its confidentiality designation identified in the filename of the native file.
Source code will be produced in accordance with the protective order(s) entered in this matter.
The Parties agree that the search terms will not be applied to source code.
A party is only required to produce a single copy of a responsive document and a party
may de-duplicate responsive ESI (based on MD5 or SHA-1 hash values at the document level)
across Custodians.
The Parties identify the following accessible and inaccessible ESI as to the Parties:
a. Accessible ESI: Reasonably accessible sources of ESI include electronic
documents stored on computer networks, hard drives, shared network drives, workstation or
laptop hard drives, and portable drives/media, including external hard drives, zip drives, CDROM
and DVD-ROM disks, and USB Flash Drives/Jump Drives. Each Party will conduct a
reasonably diligent search of those reasonably accessible sources in which it has reason to believe
relevant, non-duplicative ESI responsive to discovery requests will be found.
b. Inaccessible ESI: Contingent on each Party’s compliance with the
obligations set forth in Paragraph 3(a) above, the Parties agree that the circumstances of this case
do not warrant the preservation, review, or production of ESI that is not reasonably accessible
because it is unlikely that significant relevant information would be located in those sources,
which is not otherwise available from reasonably accessible sources. Moreover, the remote
8
possibility is substantially outweighed by the burden and cost of preservation and/or review and
production of ESI from such sources. The Parties further agree that the following types of ESI are
not reasonably accessible:
• Backup tapes and archive media: Plaintiff asserts that backup tapes and archive
media created before the date of the filing of the Complaint are inaccessible.
• Voicemail;
• Instant messaging and text messaging;
• Legacy data;
• Residual, fragmented, damaged, permanently deleted slack and unallocated data;
• Data residing on mobile telephones and handheld PDA-type devices;
• Metadata;
• Offline archived data; and
• Customer data that may be stored on Defendant’s system.
4. Privilege Issues (FRCP 26(f))(3)(D))
The Parties have agreed that attorney-client communications and work product will be
asserted on a document-by-document basis. The Parties agree and propose that privileged
communications and work product occurring after the filing of the Complaint in this matter need
not be listed in a privilege log.
The Parties shall have the right to claw back inadvertently produced privileged or workproduct
documents and agree to the following protocol:
Pursuant to Fed. R. Evid. 502(d), the production of a privileged or work-product-protected
document(s) that are inadvertently provided is not a waiver of privilege or protection from
discovery in this case or in any other federal or state proceeding. Inadvertence is established
where a party makes a good faith representation, in writing to the receiving party, that such
production was inadvertent or mistaken. For example, the mere production of privileged or workproduct-
protected documents in this case as part of a mass production is not itself a waiver. A
producing party may assert privilege or protection over produced documents at any time by
notifying the receiving party in writing of the assertion of privilege or protection. In addition,
9
information that contains privileged matter or work product shall be returned if such information
appears on its face to have been inadvertently produced, or if requested. Nothing contained in
this Paragraph 4 is intended to or shall serve to limit a party’s right to conduct a review of
documents, ESI, or information (including metadata) for relevance, responsiveness, and/or
segregation of privileged and/or protected information before production.
5. Discovery Limitations (FRCP 26(f)(3)(E))
The Parties do not believe that there should be any limitations to discovery other than
those set forth in the Federal Rules of Civil Procedure, the Local Rules, the Patent Local Rules,
and the Orders of this Court except as noted below:
The Parties agree that the limits on depositions set forth in the Federal Rules of Civil
Procedure shall govern depositions, except that, for each expert report served by an expert
witness, the Parties will be permitted one day of seven hours to depose said expert witness. By
way of example, if a party designates a single expert to testify on the separate issues of
infringement and invalidity, the opposing party will be permitted to depose that expert for one day
of seven hours on each respective issue. The Parties will make every effort to minimize the
expense of discovery as appropriate.
6. Other Orders (FRCP 26(f)(3)(F))
The Parties agree that a protective order is necessary for the disclosure of certain
confidential and proprietary business and financial information. The Parties will work together to
reach agreement and, upon agreement, will submit a Stipulated Protective Order to the Court for
adoption at a later date.
C. OTHER DISCOVERY MATTERS
The Parties agree to accept service of documents via email.
The Parties will work together (and no party should be permitted to have the unilateral
right) to attempt to identify representative products in order to streamline (a) discovery; and (b)
the trial of this matter. The Parties further agree, and ask the Court to order, that the Parties may
modify the discovery limitations by consent of all Parties without requiring express authorization
from the Court. In the event that a Party seeks discovery beyond the limitations set forth herein
AMENDED JOINT CASE MANAGEMENT STATEMENT CASE NO. 3:15-CV-05793-JST
AND [PROPOSED] ORDER
10
and the other Party does not consent, the Party seeking discovery beyond said limitations may
seek relief from the Court in compliance with the Local Rules, and upon a showing of good cause
for modification of the discovery limits.
VIII. CLASS ACTIONS
This matter is not a class action case.
IX. RELATED CASES
The Parties identify the following related pending cases or proceedings, all of which are
currently pending:
• e.Digital v. ArcSoft, S.D.Cal. Case No. 3:15-cv-56-BEN-DHB
• e.Digital v. Ivideon, N.D.Cal. Case No. 3:15-cv-691-JST
• e.Digital v. iBaby, Inc., N.D.Cal. Case No. 3:15-cv-5790-JST
X. RELIEF
Plaintiff prays for relief and judgment as follows:
(1) That Defendant be declared to have infringed the Asserted Patents;
(2) That Defendant, Defendant’s officers, agents, servants, employees, and
attorneys, and those persons in active concert or participation with them, be
preliminarily and permanently enjoined from infringement of the Asserted
Patents, including but not limited to any making, using, offering for sale,
selling, or importing of unlicensed infringing products within and without
the United States;
(3) Compensation for all damages caused by Defendant’s infringement of the
Asserted Patents to be determined at trial;
(4) A finding that this case is exceptional and an award of reasonable attorneys
fees pursuant to 35 U.S.C. § 285;
(5) Granting Plaintiff pre-and post-judgment interest on its damages, together
with all costs and expenses; and,
(6) Awarding such other relief as this Court may deem just and proper.
Plaintiff will base its claim for damages on a reasonable royalty to be established through
17 Recommendations
Loading...
Loading...
New Message
Please
login
to post a reply