IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
NEONODE SMARTPHONE LLC,
Plaintiff,
Civil Action No. 6:20-cv-00507-ADA
v.
SAMSUNG ELECTRONICS CO. LTD. JURY TRIAL DEMANDED
and SAMSUNG ELECTRONICS
AMERICA, INC.,
Defendants.
AGREED SCHEDULING ORDER
Pursuant to Rule 16, Federal Rules of Civil Procedure, the Court ORDERS that the
following schedule will govern deadlines up to and including the trial of this matter:
Deadline Item
October 16, 2020 Plaintiff serves preliminary 1 infringement contentions in the
form of a chart setting forth where in the accused product(s)
each element of the asserted claim(s) are found. Plaintiff shall
also identify the earliest priority date (i.e. the earliest date of
invention) for each asserted claim and produce: (1) all
documents evidencing conception and reduction to practice
for each claimed invention, and (2) a copy of the file history
for each patent in suit.
November 6, 2020 Deadline for Motions to Transfer.
1
The parties may amend preliminary infringement contentions and preliminary invalidity
contentions without leave of court so long as counsel certifies that it undertook reasonable efforts
to prepare its preliminary contentions and the amendment is based on material identified after those
preliminary contentions were served and should do so seasonably upon identifying any such
material. Any amendment to add patent claims requires leave of court so that the Court can address
any scheduling issues.
Deadline Item
February 24, 2023 Defendant serves preliminary invalidity contentions in the
form of (1) a chart setting forth where in the prior art
references each element of the asserted claim(s) are found, (2)
an identification of any limitations the Defendant contends are
indefinite or lack written description under section 112, and
(3) an identification of any claims the Defendant contends are
directed to ineligible subject matter under section 101. The §
101 contention shall (1) identify the alleged abstract idea, law
of nature, and/or natural phenomenon in each challenged
claim; (2) identify each claim element alleged to be well-
understood, routine, and/or conventional; and (3) to the extent
not duplicative of §§ 102/103 prior art contentions, prior art
for the contention that claim elements are well-understood,
routine, and/or conventional. Defendant shall also produce (1)
all prior art referenced in the invalidity contentions, and (2)
technical documents, including software where applicable,
sufficient to show the operation of the accused product(s). 2
March 10, 2023 Parties exchange claim terms for construction.
March 24, 2023 Parties exchange proposed claim constructions.
March 31, 2023 Parties disclose extrinsic evidence. The parties shall disclose
any extrinsic evidence, including the identity of any expert
witness they may rely upon with respect to claim construction
or indefiniteness. With respect to any expert identified, the
parties shall identify the scope of the topics for the witness’s
expected testimony. 3 With respect to items of extrinsic
evidence, the parties shall identify each such item by
production number or produce a copy of any such item if not
previously produced.
April 7, 2023 Deadline to meet and confer to narrow terms in dispute and
exchange revised list of terms/constructions.
April 14, 2023 Defendant files Opening claim construction brief, including
any arguments that any claim terms are indefinite.
May 5, 2023 Plaintiff files Responsive claim construction brief.
May 19, 2023 Defendant files Reply claim construction brief.
May 19, 2023 Parties to jointly email the law clerks (see OGP at 1) to
confirm their Markman date and to notify if any venue or
2
To the extent it may promote early resolution, the Court encourages the parties to exchange
license and sales information, but any such exchange is optional during the pre-Markman phase of
the case.
3
Any party may utilize a rebuttal expert in response to a brief where expert testimony is relied
upon by the other party.
Deadline Item
jurisdictional motions remain unripe for resolution.
June 2, 2023 Plaintiff files a Sur-Reply claim construction brief.
June 7, 2023 Parties submit Joint Claim Construction Statement and email
the law clerks an editable copy.
See General Issues Note #7 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).
June 9, 2023 Parties submit optional technical tutorials to the Court and
technical adviser (if appointed).
June 23, 2023 4 Markman Hearing at 9:00 a.m. This date is a placeholder and
the Court may adjust this date as the Markman hearing
approaches.
June 26, 2023 Fact Discovery opens; deadline to serve Initial Disclosures per
Rule 26(a).
August 4, 2023 Deadline to add parties.
August 18, 2023 Deadline to serve Final Infringement and Invalidity
Contentions. After this date, leave of Court is required for any
amendment to infringement or invalidity contentions. This
deadline does not relieve the parties of their obligation to
seasonably amend if new information is identified after initial
contentions.
October 13, 2023 Deadline to amend pleadings. A motion is not required unless
the amendment adds patents or patent claims. (Note: This
includes amendments in response to a 12(c) motion.)
December 22, 2023 Deadline for the first of two meet and confers to discuss
significantly narrowing the number of claims asserted and
prior art references at issue. Unless the parties agree to the
narrowing, they are ordered to contact the Court’s law clerk to
arrange a teleconference with the Court to resolve the disputed
issues.
January 26, 2024 Close of Fact Discovery.
February 2, 2024 Opening Expert Reports.
March 1, 2024 Rebuttal Expert Reports.
March 22, 2024 Close of Expert Discovery.
4
All deadlines hereafter follow the original Markman hearing date and do not change if the Court
delays the Markman hearing.
Deadline Item
March 29, 2024 Deadline for the second of two meet and confers to discuss
narrowing the number of claims asserted and prior art
references at issue to triable limits. If it helps the parties
determine these limits, the parties are encouraged to contact
the Court’s law clerk for an estimate of the amount of trial
time anticipated per side. The parties shall file a Joint Report
within 5 business days regarding the results of the meet and
confer.
April 5, 2024 Dispositive motion deadline and Daubert motion deadline.
See General Issues Note #7 regarding providing copies of the
briefing to the Court and the technical advisor (if appointed).
April 19, 2024 Serve Pretrial Disclosures (jury instructions, exhibits lists,
witness lists, discovery and deposition designations).
May 3, 2024 Serve objections to pretrial disclosures/rebuttal disclosures.
May 3, 2024 (8 weeks Parties to jointly email the Court’s law clerk (See OGP at 1) to
before trial) confirm their pretrial conference and trial dates.
May 10, 2024 Serve objections to rebuttal disclosures; file Motions in limine.
May 17, 2024 File Joint Pretrial Order and Pretrial Submissions (jury
instructions, exhibits lists, witness lists, discovery and
deposition designations); file oppositions to motions in limine
May 24, 2024 File Notice of Request for Daily Transcript or Real Time
Reporting. If a daily transcript or real time reporting of court
proceedings is requested for trial, the party or parties making
said request shall file a notice with the Court and e-mail the
Court Reporter, Kristie Davis at kmdaviscsr@[Link].
Deadline to meet and confer regarding remaining objections
and disputes on motions in limine.
June 4, 2024 (3 business File joint notice identifying remaining objections to pretrial
days before Final disclosures and disputes on motions in limine.
Pretrial Conference)
June 7, 2024 Final Pretrial Conference. Held in person unless otherwise
requested.
June 28, 2024 5 Jury Selection/Trial.
5
If the actual trial date materially differs from the Court’s default schedule, the Court will consider
reasonable amendments to the case schedule post-Markman that are consistent with the Court’s
default deadlines in light of the actual trial date.
SIGNED this ____________ day of ____________________, 2023.
___________________________
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE
AGREED:
By: /s/ Philip J. Graves By: /s/ John Michael Guaragna
Philip J. Graves John Michael Guaragna
CA State Bar No. 153441 DLA Piper LLP
Email: pgraves@[Link] 401 Congress Suite 2500
Greer N. Shaw Austin, TX 78701
CA State Bar No. 197960 (512) 457-7125
Email: gshaw@[Link] Fax: 512/457-7001
GRAVES & SHAW LLP [Link]@[Link]
355 S. Grand Ave., Ste. 2450
Los Angeles, CA 90071
Telephone: (213) 204-5101 Benjamin Mueller
DLA Piper LLP
Craig D. Cherry 444 West Lake Street, Suite 900
State Bar No. 24012419 Chicago, IL 60606
craig@[Link] (312) 368-4000
Justin W. Allen Fax: (312) 236-7516
State Bar No. 24081977 [Link]@[Link]
justin@[Link]
STECKLER WAYNE COCHRAN Mark D. Fowler
CHERRY Erik R. Fuehrer
8416 Old McGregor Road DLA Piper LLP
Waco, Texas 76712 2000 University Avenue
Telephone: (254) 651-3690 East Palo Alto, CA 94303-2214
(650) 833-2000
Counsel for Plaintiff Fax: (650) 833-2001
[Link]@[Link]
Neonode Smartphone LLC
[Link]@[Link]
Susan Acquista
Tiffany C. Miller
DLA Piper LLP
401 B Street, Suite 1700
San Diego , CA 92101
(619) 699-2700
Fax: (619) 699-2701
[Link]@[Link]
[Link]@[Link]
Counsel for Defendants
Samsung Electronics Co. Ltd. and
Samsung Electronics America, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on January 26, 2023, I electronically filed the foregoing with the
Clerk of Court using the CM/ECF system which will send notification of such filing to the
following:
/s/ Philip Graves
Philip Graves
John Michael Guaragna Mark D. Fowler
DLA Piper LLP Erik R. Fuehrer
401 Congress Suite 2500 DLA Piper LLP
Austin, TX 78701 2000 University Avenue
(512) 457-7125 East Palo Alto, CA 94303-2214
Fax: 512/457-7001 (650) 833-2000
[Link]@[Link] Fax: (650) 833-2001
[Link]@[Link]
Benjamin Mueller [Link]@[Link]
DLA Piper LLP
444 West Lake Street, Suite 900 Susan Acquista
Chicago, IL 60606 Tiffany C. Miller
(312) 368-4000 DLA Piper LLP
Fax: (312) 236-7516 401 B Street, Suite 1700
[Link]@[Link] San Diego , CA 92101
(619) 699-2700
Fax: (619) 699-2701
[Link]@[Link]
[Link]@[Link]
Attorneys for Defendants
Samsung Electronics Co. Ltd. and
Samsung Electronics America, Inc.