UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

ONSTREAM MEDIA CORPORATION

vs.

FACEBOOK INC.

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NO: AU:20-CV-00214-ADA

ORDER GOVERNING PROCEEDINGS – PATENT CASE

This Order shall govern proceedings in this case. The following deadlines are hereby set:

1. This case is SET for a telephonic Rule 16 Case Management Conference on Wednesday,

April 29, 2020 at 10:00 a.m.. Participants shall dial into the following number 5 minutes

before the scheduled time: (866) 434-5269; access code 9678090. Lead counsel for each

party, and all unrepresented parties, shall be present. Client representatives are welcome

to attend, but such attendance is not required. In person attendance is permitted, but not

required. Anyone planning to attend in person should so inform the Court by contacting

chambers not later than two court days before the scheduled hearing so the Court can

evaluate whether to hold the conference in the courtroom, or in chambers. The Court

expects the parties to be prepared to discuss:

a. an overview of the claims and defenses, including any unique issues the parties

believe should be addressed at this stage of the case;

b. issues involving the case schedule and potential amendments to the Court’s default

scheduling order, including the date for the Markman Hearing;

c. issues relating to claim construction, including whether a live tutorial would be of

benefit to the Court;

d. issues relating to discovery, including potential amendments to the Court’s default

discovery limits or Protective Order; and,

e. any other issues the parties believe would lead to the just, speedy and inexpensive

determination of this action. 

2. (Not later than 7 days before the CMC). Plaintiff shall serve preliminary 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 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.

3. (Not later than 3 business days before the CMC). Lead counsel for each party shall meet

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 1 of 9
and confer (either in person or by telephone), to discuss whether they believe the Court’s

default Scheduling Order and default Discovery Limits are appropriate for this case, and

any issues relating to the management of this case they intend to raise at the CMC.

4. (Two weeks after the CMC). The Parties shall submit an agreed Scheduling Order. If the

parties cannot agree, the parties shall submit a separate Joint Motion for entry of each

Order briefly setting forth their respective positions on items where they cannot agree. 

Absent agreement of the parties, the Plaintiff shall be responsible for the timely

submission of this and other Joint filings.

5. (Two weeks after the CMC). Deadline for Motions to Transfer. The Court also adopts

the following page limits and briefing schedule of Motions to Transfer:

a. Opening - 15 pages

b. Reponse - 15 pages, due 14 days after the Opening brief

c. Reply - 5 pages, due 7 days after the Response brief

6. (Seven weeks after the CMC). Defendant shall serve 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. Defendant shall also produce (1) all prior art referenced in the

invalidity contentions, (2) technical documents, including software where applicable,

sufficient to show the operation of the accused product(s), and (3) summary, annual sales

information for the accused product(s) for the two years preceeding the filing of the

Complaint,1 unless the parties agree to some other timeframe. 

DISCOVERY

Except with regard to discovery necessary for claim construction, all other discovery is stayed

until after the Markman hearing. Notwithstanding this general stay of discovery, the Court will

permit limited discovery by agreement of the parties, or upon request, where exceptional

circumstances warrant. For example, if discovery outside the United States is contemplated, the

Court will be inclined to allow such discovery to commence before the Markman hearing.

__________________________

1With regard to expired patents, the sales information shall be provided for the two years

preceding expiration.

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 2 of 9
Following the Markman hearing, the following discovery limits will apply to this case. The

Court will consider reasonable requests to increase these limits should circumstances warrant.

1. Interrogatories: 30 per side2

2. Requests for Admission: 45 per side

3. Requests for Production: 75 per side

4. Fact Depositions: 70 hours per side (for both party and non-party witnesses combined)

5. Expert Depositions: 7 hours per report3

Electronically Stored Information. As a preliminary matter, the Court will not require general

search and production of email or other electronically stored information (ESI), absent a showing

of good cause. If a party believes targeted email/ESI discovery is necessary, it shall propose a

procedure identifying custodians and search terms it believes the opposing party should search. 

The opposing party can oppose, or propose an alternate plan. If the parties cannot agree, they

shall contact chambers to schedule a call with the Court to discuss their respective positions.

DISCOVERY DISPUTES

A party may not file a Motion to Compel discovery unless: (1) lead counsel have met and

conferred in good faith to try to resolve the dispute, and (2) the party has contacted the Court's

law clerk (with opposing counsel) to arrange a telephone conference with the Court to summarize

the dispute and the parties respective positions. After hearing from the parties, the Court will

determine if further briefing is required.

PROTECTIVE ORDER

Pending entry of the final Protective Order, the Court issues the following interim Protective

Order to govern the disclosure of confidential information in this matter:

If any document or information produced in this matter is deemed confidential by the

producing party and if the Court has not entered a protective order, until a protective

order is issued by the Court, the document shall be marked “confidential” or with some

other confidential designation (such as “Confidential – Outside Attorneys Eyes Only”) by

the disclosing party and disclosure of the confidential document or information shall be

limited to each party’s outside attorney(s) of record and the employees of such outside

attorney(s).

__________________________

2 A "side" shall mean the plaintiff (or related plaintiffs suing together) on the one hand, and the

defendant (or related defendants sued togther) on the other hand. In the event that the Court

consolidates related cases for pretrial purposes, with regard to calculating limits imposed by this

Order, a "side" shall be interpreted as if the cases were proceeding individually. For example, in

consolidated cases the plaintiff may serve up to 30 interrogatories on each defendant, and each

defendant may serve up to 30 interrogatories on the plaintiff.

3 For example, if a single technical expert submits reports on both infringement and invalidity,

he or she may be deposed for up to 14 hours in total.

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If a party is not represented by an outside attorney, disclosure of the confidential

document or information shall be limited to one designated “in house” attorney, whose

identity and job functions shall be disclosed to the producing party 5 days prior to any

such disclosure, in order to permit any motion for protective order or other relief

regarding such disclosure. The person(s) to whom disclosure of a confidential document

or information is made under this local rule shall keep it confidential and use it only for

purposes of litigating the case.

CLAIM CONSTRUCTION ISSUES

Terms for Construction. The Court does not have a specific limit on the number of asserted

claims or claim terms to be construed; however, the Court encourages the parties to focus on

their top ten claim terms in order of importance. In cases with an unusually large number of

patents or asserted claims, the Court may revisit this topic and will be open to suggestions from

the parties. 

Claim Construction Briefing. The Court will require simultaneous claim construction briefing

with the following default page limits; however, where exceptional circumstances warrant, the

Court will consider reasonable requests to adjust these limits. These page limits shall also apply

collectively for consolidated cases; however, the Court will consider reasonable requests to

adjust page limits in consolidated cases where circumstances warrant. In addition, the Court is

very familiar with the law of claim construction and encourages the parties to forego lengthy

recitations of the underlying legal authorities and instead focus on the substantive issues unique

to each case.

Unless otherwise agreed by the parties, all simultaneeous filings will take place at 5:00 p.m. CT.

Page Limits for Markman Briefs

Brief 1-2 Patents 3-5 Patents More than 5 patents

Opening 20 pages 30 pages 30 pages, plus 5

additional pages for

each patent over 5 up

to a maximum of 45

pages

Response 20 pages 30 pages 30 pages, plus 5

additional pages for

each patent over 5 up

to a maximum of 45

pages

Reply 10 pages 15 pages 15 pages, plus 2

additional pages for

each patent over 5 up

to a maximum of 21

pages

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 4 of 9
Conduct of the Markman Hearing. The Court intends to set aside one half day for the

Markman hearing; however, the Court is open to reserving more or less time, depending on the

complexity of the case and input from the parties. The Court is open to the presentation of live

technology tutorials when they may be of benefit. The parties may also submit tutorials in

electronic form by the deadline for submission of the Joint Claim Construction Statement. If a

party intends to present a live tutorial, it should be (1) directed to the underlying technology

(rather than argument related to infringement or validity), and (2) limited to 15 minutes per side

at the start of the Markman hearing. For the Court's convenience, the tutorial may be recorded,

but will not be part of the record. Parties may not rely on or cite to the tutorial in other aspects of

the litigation.

The Court will consider the parties suggestions on the order of argument at the Markman

hearing. However, if the parties do not suggest a different procedure, the Court will allow the

Plaintiff to pick the first term and then alternate by term. As a general rule, if one side proposes

“plain and ordinary meaning” as its construction or asserts that a term is indefinite, the other

party shall go first. 

GENERAL ISSUES

1. The Court does not have a limit on the number of motions for summary judgment (MSJs);

however, absent leave of Court, the cumulative page limit for Opening Briefs for all MSJs is

40 pages per side.

2. The Court encourages the submission of Markman briefs via audio file so that the Court can

listen to the arguments. The recordings shall be made in a neutral fashion, shall be verbatim

transcriptions without additional colloquy (except that citations and legal authority sections

need not be included), and each such file shall be served on opposing counsel. The Court

does not have a preference for the manner of recording and has found automated software

recordings, as well as attorney recordings, to be more than satisfactory. Austio files shall be

submitted via USB drive, Dropbox (not another cloud-storage), or email to the law clerk

(with a cc to opposing counsel) and should be submitted in mp3 format. 

3. The Court will entertain reasonable requests to streamline the case schedule and discovery

and encourages the parties to contact the Court's law clerk (with opposing counsel) to arrange

a call with the Court when such interaction might help streamline the case.

 ORDERED this 7th day of April, 2020. 

______________________________

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 5 of 9
APPENIDX A – DEFAULT SCHEDULE

Deadline Item

7 days before CMC Plaintiff serves preliminary4 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.

2 weeks after CMC Deadline for Motions to Transfer

7 weeks after CMC 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. 

Defendant shall also produce (1) all prior art referenced in the

invalidity contentions, (2) technical documents, including

software where applicable, sufficient to show the operation of

the accused product(s), and (3) summary, annual sales

information for the accused product(s) for the prior two years,

unless the parties agree to some other timeframe.

9 weeks after CMC Parties exchange claim terms for construction.

11 weeks after CMC Parties exchange proposed claim constructions.

_________________________

4The parties may amend preliminary infringement contentions and preliminary invalidity contentions without leave

of the 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.

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 6 of 9
12 weeks after CMC 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 also provide a summary of the witness’s expected

testimony including the opinions to be expressed and a general

description of the basis and reasons therefore. A failure to

summarize the potential expert testimony in a good faith,

informative fashion may result in the exclusion of the

proffered testimony. 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.

13 weeks after CMC Deadline to meet and confer to narrow terms in dispute and

exchange revised list of terms/constructions.

14 weeks after CMC Parties file Opening claim construction briefs, including any

arguments that any claim terms are indefinite.

17 weeks after CMC Parties file Responsive claim construction briefs. 

19 weeks after CMC Parties file Reply claim construction briefs.

20 weeks after CMC Parties submit Joint Claim Construction Statement. In

addition to filing, the parties shall jointly submit, via USB

drive, cloud-storage, or email to the law clerk pdf versions of

all as-filed briefing and exhibits. Absent agreement of the

parties, the Plaintiff shall be responsible for the timely

submission of this and other Joint filings.

24 weeks after CMC (or as

soon as practicable)

Markman Hearing at [9:00 a.m. or 1:00 p.m.]

1 week after Markman

hearing

Fact Discovery opens; deadline to serve Initial Disclosures per

Rule 26(a).

6 weeks after Markman

hearing

Deadline to add parties.

8 weeks after Markman

hearing

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.

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 7 of 9
12 weeks after Markman

hearing

Deadline to amend pleadings. A motion is not required unless

the amendment adds patents or claims.

30 weeks after Markman

hearing

Close of Fact Discovery.

31 weeks after Markman

hearing

Opening Expert Reports.

35 weeks after Markman

hearing

Rebuttal Expert Reports.

38 weeks after Markman

hearing

Close of Expert Discovery.

39 weeks after Markman

hearing

Deadline to meet and confer to discuss narrowing the number

of claims asserted and prior art references at issue. The parties

shall file a Joint Report within 5 business days regarding the

results of the meet and confer.

40 weeks after Markman

hearing

Dispositive motion deadline and Daubert motion deadline.

42 weeks after Markman

hearing

Serve Pretrial Disclosures (jury instructions, exhibits lists,

witness lists, discovery and deposition designations).

44 weeks after Markman

hearing

Serve objections to pretrial disclosures/rebuttal disclosures.

45 weeks after Markman

hearing

Serve objections to rebuttal disclosures and File Motions in

limine.

46 weeks after Markman

hearing

File Joint Pretrial Order and Pretrial Submissions (jury

instructions, exhibits lists, witness lists, discovery and

deposition designations); file oppositions to motions in limine

47 weeks after Markman

hearing

Deadline to meet and confer regarding remaining objections

and disputes on motions in limine. 

3 business days before

Final Pretrial Conference

File joint notice identifying remaining objections to pretrial

disclosures and disputes on motions in limine.

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 8 of 9
49 weeks after Markman

hearing (or as soon as

practicable)

Final Pretrial Conference. The Court expects to set this date

at the conclusion of the Markman Hearing. 

52 weeks after Markman

hearing (or as soon as

practicable)5

Jury Selection/Trial. The Court expects to set this date at the

conclusion of the Markman Hearing.

________________________

5If 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.

Case 1:20-cv-00214-ADA Document 25 Filed 04/07/20 Page 9 of 9