United States District Court

For the Northern District of California

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SANDISK CORPORATION,

Plaintiff,

 v.

LSI CORPORATION,

Defendant. /

LSI CORPORATION and AGERE

SYSTEMS, INC.,

Counterclaimants,

 v.

SANDISK CORPORATION,

Counterdefendant. /

No. C 09-02737 WHA

ORDER REGARDING 

COURT-APPOINTED 

EXPERT

To be of assistance to the Court and the court-appointed expert, Attorney John Cooper of

Farella Braun + Martel LLP has agreed to assist, pro bono, in framing a form of reference and

assignment for the selected Rule 706 expert candidate, Dr. Chang Choo. Attorney Cooper will

focus particularly on making sure that the assignments allocated to the court-appointed expert are

workable from Dr. Choo’s viewpoint. The Court appreciates Attorney Cooper’s willingness to

serve, and recognizes that once the form of reference and assignment is completed, Attorney

Cooper will immediately recede from the scene and his involvement with this litigation will end.

Therefore, Attorney Cooper should contact Dr. Choo promptly to go over the proposed

scope of assignment appended hereto. Attorney Cooper should also discuss with counsel on both 

Case 3:09-cv-02737-WHA Document 112 Filed 03/17/10 Page 1 of 3
United States District Court

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sides any possible changes to the proposed assignment. All involved should be aware that the

assignment of tasks should be structured in a way so that the vast majority of Dr. Choo’s work is

postponed until close to the time that expert reports are due. This will minimize unnecessary

expenses if the case happens to settle sooner rather than later. Of course, Dr. Choo will need to

invest some time in the coming months to get up to speed with the litigation and the technologies

involved, and should be compensated for such work.

Counsel shall meet and confer, and submit a proposed form of reference and assignment

BY FRIDAY, APRIL 2, 2010. Counsel shall also ensure that Dr. Choo receives a copy of this order

in due course, and that Attorney Cooper is immediately provided with Dr. Choo’s contact

information. Again, all should be aware that Dr. Choo’s main role will be to testify at trial; he is

not to act as a law clerk or confidential advisor to the judge.

IT IS SO ORDERED.

Dated: March 17, 2010. 

WILLIAM ALSUP

UNITED STATES DISTRICT JUDGE

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SCOPE OF ASSIGNMENT FOR RULE 706 EXPERT

[For Discussion Only]

The Rule 706 expert shall be appointed to do the following:

1. Testify at summary judgment and/or at trial on invalidity challenges to the claims-insuit based on the prior art.

2. Testify at summary judgment and/or at trial on whether the accused products infringe

the claims-in-suit.

3. Be prepared to testify on how various terms in the claims-in-suit would have been

understood by a person of ordinary skill in the art.

In order to do the foregoing, the Rule 706 expert shall:

• Study the patents and claims-in-suit and related prosecution histories.

• Review and evaluate the parties' local-rule disclosures regarding invalidity and

infringement.

• Study and evaluate the accused products.

• Study and evaluate the prior art.

• Study and evaluate the expert reports by both sides.

• Make requests to counsel for such additional materials as will be needed to accomplish

all of the foregoing tasks.

• Meet with the two sides’ experts to discuss the issues and their respective views in

non-recorded sessions. The views expressed in these meetings will not be viable as

evidence.

• Prepare his own report on invalidity, infringement, and claim construction (if so

requested).

• Sit for a deposition on all of the foregoing tasks.

• Do all of the foregoing tasks in a timely manner consistent with the case management

schedule.

By the 15th of each month, the Rule 706 expert shall submit to both sides a total

invoice for the work performed and expenses incurred in the preceding month, and each side

shall pay one half of this total within 21 calendar days unless an objection is filed with the

Court by the non-paying party.

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