APPENDIX D

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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a BRAZOS 

LICENSING AND DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL INC., 

EMC CORPORATION, AND VMWARE, 

INC.,

Defendants.

Case No. 6:20-cv-00486-ADA

JURY TRIAL DEMANDED

LETTER OF REQUEST: REQUEST FOR INTERNATIONAL JUDICIAL ASSISTANCE 

PURSUANT TO EVIDENCE ACT OF ONTARIO AND THE 

CANADA EVIDENCE ACT

GREETINGS:

1. Sender The Honorable Judge Alan D Albright, District Judge

United States District Court for the Western District 

of Texas, Waco Division

800 Franklin Avenue Room 301

Waco, Texas 76701

USA

2. Authority to Whom the Request 

is Made

Ontario Superior Court of Justice

Ottawa Courthouse

161 Elgin St., 2nd Fl.

Ottawa, Ontario, K2P 2K1

Canada

Tel: +1 (613) 239-1054

Attention: Presiding Judge

In conformity with the Evidence Act of Ontario, the Canada Evidence Act, the Federal Rule 

of Civil Procedure 28(b), and 28 U.S.C.A. 1781(b), the undersigned authority respectfully has the 

honor to submit the following request to the Ontario Superior Court of Justice, and hereby requests 

that the Ontario Superior Court of Justice summon the witness to whom this request is directed to 

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attend at such place and time as that Court shall appoint and to produce the documents in their

possession, custody, or control, as set out below.

This Letter of Request is in issue from a court of competent jurisdiction, i.e., the United 

States District Court for the Western District of Texas (“this Court”). This Court properly has 

jurisdiction over these proceedings, is a competent court of law and equity, and has the power to 

compel the attendance of witnesses and the production of documents by individuals and 

corporations in its jurisdiction. The testimony and documents sought in this request pertain 

specifically and solely to the action, case number 6:20-cv-00486-ADA, pending before this Court. 

This Court issuing this Letter of Request undertakes that it is ready and willing to issue orders 

compelling production of materials and attendance of witnesses analogous to those requested 

herein for an issuing Canadian Court if such circumstance manifests.

The Ontario Superior Court of Justice properly has jurisdiction over the party to which this 

Letter of Request is directed as Nokia Canada Inc. is a subject of the Ontario Superior Court of 

Justice by way of its residence in this jurisdiction. The Ontario Superior Court of Justice, being a 

competent court of law and equity, has the power to compel the attendance of witnesses and the 

production of documents by individuals and corporations inside of its jurisdiction. See Evidence 

Act, R.S.O. 1990, c.E.23, s. 60 and Canada Evidence Act, R.S.C., 1985, c. C-5, s. 46.

The evidence sought here is critical and necessary to defenses afforded to Defendants under 

United States patent law, is necessary to enable this Court to resolve the dispute between the 

parties, and without which justice cannot be served between the parties. The documents and 

depositions identified herein pertain directly to quantifying any alleged damages and to defenses, 

such as, non-infringement, invalidity (including, obviousness, secondary considerations regarding 

obviousness, anticipation, patent-eligibility, written description, indefiniteness, and enablement), 

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inequitable conduct, improper inventorship, derivation, license exhaustion, non-infringing 

alternatives, and failure to mark, among others. The relevance of the discovery sought is detailed 

with specificity in the attached Document and Oral Examination Requests. See Exhibit D1 and 

D2.

The evidence sought here is not otherwise obtainable via document or oral discovery in the 

United States because Plaintiff is a non-practicing patent acquisition entity that only recently 

acquired U.S. Patent No. 7,092,360 (“the ’360 patent”) in 2017. Therefore, Plaintiff does not 

possess any of the knowledge or documents traditionally necessary for Defendants to muster a 

wholesome defense to claims asserted against it by Plaintiff. For example, Plaintiff does not have 

knowledge of or documents relating to the research and development that led to the ’360 patent; 

the prosecution of the ’360 patent; prior uses, sales, and/or publications of the processes recited 

in the claims of the ’360 patent; any commercial embodiments of the ’360 patent; the state of the 

art at the time of the alleged invention of the ’360 patent; the assignments and licensing of the ’360

patent; and any valuations of the ’360 patent. In contrast, Nokia Canada Inc., as a former assignee 

of the ’360 patent is likely to have this knowledge and/or possession, custody, or control of these 

highly relevant documents. As previously stated, this evidence is both relevant and necessary to 

Defendant’s defenses and quantifying damages.

This Letter of Request seeks only evidence otherwise unobtainable via document or oral 

discovery within the United States and does not ask for the production of privileged evidence. 

This Court is cognizant of the potential burdens placed upon the third-party who may appear for 

testimony or produce evidence in response to this request, and thus this request seeks only evidence 

that is critical to Defendants’ defenses under U.S. law. This Letter of Request is limited to specific 

materials or classes of materials that are the most likely to produce important and relevant evidence 

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to defenses in this matter. Documents and deposition topics have been identified with as much 

specificity as possible, while still ensuring Defendants are capable of acquiring materials relevant 

to put forth a wholesome defense on every issue in question. If any part of this Letter of Request 

cannot be enforced under the laws of Ontario, it is requested that the remaining part be enforced.

Defendants offer an undertaking that the evidence sought by this Letter of Request will not 

be used for any purpose other than in the instant proceeding named in this Letter of Request unless 

leave is otherwise granted by the Ontario Superior Court of Justice.

5. a. Requesting Judicial 

Authority (Article 3, a)

The Honorable Judge Alan D Albright, District Judge

United States District Court for the Western District 

of Texas, Waco Division

800 Franklin Avenue Room 301

Waco, Texas 76701

USA

b. To the competent Authority 

of (Article 3, a)

Ontario Superior Court of Justice

Ottawa Courthouse

161 Elgin St., 2nd Fl.

Ottawa, Ontario K2P 2K1

Canada

Tel: +1 (613) 239-1054

c. Names of the case and any 

identifying number

WSOU Investments LLC v. Dell Technologies Inc.

Case No. 6:20-cv-00486-ADA, United States District 

Court for the Western District of Texas

6. Names and addresses of the parties and their representative (including representatives in 

the requested State) (Article 3, b)

a. Plaintiffs WSOU Investments LLC

Representatives WSOU is represented by:

Brett Aaron Mangrum

Etheridge Law Group

2600 East Southlake Blvd., Suite 120-324

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Southlake, TX 76092

469-401-2659

Fax: 817-887-5950

Email: brett@etheridgelaw.com

Jeffrey Huang

Etheridge Law Group PLLC

2600 East Southlake Blvd

Suite 120-324

Southlake, TX 76092

408-797-9059

Fax: 817-887-5950

Email: jhuang@etheridgelaw.com

Ryan Scott Loveless

Etheridge Law Group PLLC

2600 E Southlake Blvd

Suite 120-324

Southlake, TX 76092

972-292-8303

Fax: 817-887-5950

Email: ryan@etheridgelaw.com

James L. Etheridge

Etheridge Law Group, PLLC

2600 E. Southlake Blvd., Suite 120-324

Southlake, TX 76092

817-470-7249

Fax: 817-887-5950

Email: jim@etheridgelaw.com

b. Defendants Dell Technologies Inc., Dell Inc., EMC Corporation, 

and VMware Inc. (collectively “Defendants”)

Representatives Dell Technologies Inc., Dell Inc., EMC Corporation, 

and VMware Inc. are represented by:

Shelton Coburn LLP:

Barry K. Shelton

Shelton Coburn LLP

311 RR 620 S

Suite 205

Austin, TX 78734-4775

512-263-2165

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Fax: 512-263-2166

Email: bshelton@sheltoncoburn.com

The Defendant has appointed legal counsel in Canada

to pursue and assist with the commission to take 

evidence. The details of the Defendant’s legal counsel 

in Canada are:

Kevin Graham

Stikeman Elliott LLP

Suite 1600, 50 O’Connor Street

Ottawa, Ontario K1P 6L2

Canada

Tel:+1 613 564 3471 | +1 613 230 8877

Email: kgraham@stikeman.com

Jonathan Auerbach

Stikeman Elliott LLP

1155 René-Lévesque Blvd. West

41st Floor

Montréal, Quebec H3B 3V2

Canada

Tel: +1 514 397 3095 | +1 514 397 3222

Email : jauerbach@stikeman.com

c. Other parties N/A

Representatives N/A

7. a. Nature of the proceedings 

(divorce, paternity, breach of 

contract, product liability, etc.) 

(Article 3, c)

Civil action alleging patent infringement under the 

patent laws of the United States.

b. Summary of complaint Discovery sought in this Letter of Request is relevant 

in Case No. 6:20-cv-00486-ADA: In WSOU’s 

complaint against Defendants, WSOU alleges that 

Defendants infringe the ’360 patent. 

c. Summary of defense and 

counterclaim

In defense against WSOU’s claims of patent 

infringement of the ’360 patent, Defendants assert, 

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inter alia, that they do not infringe any of claims of the 

’360 patent and that the ’360 patent is invalid. 

Nokia Canada Inc. has knowledge of the facts relevant 

to Defendants’ defenses. Nokia Canada Inc. is relevant 

to the action by virtue of being a former assignee of the 

’360 patent. Nokia Canada Inc. holds critical facts to 

this case, including facts relevant to a number of 

defenses raised by Defendants and any potential 

damages, including information related to the 

prosecution of the ’360 patent; prior uses and/or sales 

or products and services incorporating the ’360 patent, 

publications related to the concepts claimed in the ’360

patent; commercialization, production and/or 

commercial embodiments related to the ’360 patent; 

the state of the art at the time of the alleged invention 

and/or filing of the applications related to the ’360

patent; the ownership and financial interests in the ’360

patent; conception, diligence and/or reduction to 

practice of the concepts claimed in the ’360 patent; and 

the disclosure of the claimed invention of the asserted 

patent. As well as licensing of and/or agreements 

covering the ’360 patent. And, financial knowledge 

including valuation and royalties associated with the 

’360 patent or any license and/or agreement covering 

the ’360 patent; and other financial interests (including 

revenue, costs, expenses and profits) as well as 

financial interests and information related to the ’360

patent. 

d. Other necessary information 

or documents

Nokia Canada Inc.’s current address is:

600 March Rd. 

Kanata, ON K2K 2T6, 

Canada

8. a. Evidence to be obtained or 

other judicial act to be 

performed (Article 3d),

In order to present its defenses that the ’360 patent is 

not infringed, invalid, and unenforceable and to 

determine any alleged damages, Defendants seek

certain documents from Nokia Canada Inc. Attached 

as Exhibit D1 is a request of production of certain 

documents that Defendants believe are likely to be in 

the possession, custody, or control of Nokia Canada 

Inc.

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To further clarify the evidence sought, attached as 

Exhibit D2 is an outline of the topics and issues about 

which counsel for Defendants intend to inquire of 

Nokia Canada Inc.

b. Purpose of the evidence or 

judicial act sought

With respect to the ’360 patent, Nokia Canada Inc.

has information and knowledge relating to the 

prosecution of the ’360 patent; prior uses and/or sales 

or products and services incorporating the ’360 patent, 

publications related to the concepts claimed in the 

’360 patent; commercialization, production and/or 

commercial embodiments related to the ’360 patent; 

the state of the art at the time of the alleged invention 

and/or filing of the applications related to the ’360

patent; the ownership and financial interests in the 

’360 patent; conception, diligence and/or reduction to 

practice of the concepts claimed in the ’360 patent; 

and the disclosure of the claimed invention of the 

asserted patent. As well as licensing of and/or 

agreements covering the ’360 patent. And, financial 

knowledge including valuation and royalties 

associated with the ’360 patent or any license and/or 

agreement covering the ’360 patent; and other 

financial interests (including revenue, costs, expenses 

and profits) as well as financial interests and 

information related to the ’360 patent. 

This evidence is directly relevant to Defendants’ claims 

that the ’360 patent is not infringed, invalid, and 

unenforceable and to determine any alleged damages 

under United States patent law.

9. Identity and address of any 

person to be examined (Article 

3, e)

Nokia Canada Inc.

600 March Rd. 

Kanata, ON K2K 2T6, 

Canada

10. Questions to be put to the 

persons to be examined or 

statement of the subject matter 

about which they are to be 

examined (Article 3, f)

See Exhibit D2

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11. Documents or other property to 

be inspected (Article 3, g)

See Exhibit D1

12. Any requirement that the 

evidence be given on oath or 

affirmation and any special form 

to be used (Article 3, h)

We respectfully request that the testimony be taken 

under oath under the supervision of a person who is 

authorized to administer oaths by the Ontario Superior 

Court of Justice.

13. Special methods or procedure to 

be followed (e.g. oral or in 

writing, verbatim, transcript or 

summary, cross-examination, 

etc.) (Article 3, i) and 9)

This Court respectfully requests that Nokia Canada Inc.

be directed to produce the documents identified in 

attached Exhibit D1.

This Court respectfully requests that the Ontario 

Superior Court of Justice direct a representative of 

Nokia Canada Inc. to appear on or before June 1, 2021.

This Court respectfully requests that attorneys of the 

Defendant be permitted to examine and cross-examine 

a representative of Nokia Canada Inc., and that the 

witness be directed to answer such questions, relating 

to matters outlined in attached Exhibit D2.

This Court respectfully requests that the examination 

be permitted to be conducted in accordance with the 

Federal Rules of Evidence, the United States Federal 

Rules of Civil Procedure, and the laws of Ontario, with 

the laws of Ontario to prevail in the event of a conflict.

This Court respectfully requests that the examination 

be (partially) conducted via video conference to allow 

U.S. counsel to join the hearing.

This Court respectfully requests that the testimony be 

video recorded and also transcribed verbatim.

This Court respectfully requests that the testimony be 

taken in English language if the examined person(s) 

agree, and that, if need be, simultaneous translation be 

provided.

Costs incurred in relation to the deposition examination 

(court reporter, video recorder, simultaneous 

translation) shall be at Defendants’ expense.

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14. Request for notification of the 

time and place for the execution 

of the Request and identity and 

address of any person to be 

notified (Article 7)

This Court respectfully requests that the Ontario 

Superior Court of Justice notify this Court; the 

representatives of the parties as indicated above; and 

the witness from whom evidence is requested as 

indicated above.

15. Request for attendance or 

participation of judicial 

personnel of the requesting 

authority at the execution of the 

Letter of Request (Article 8)

No judicial personnel of the requesting authority will 

attend or participate.

16. Specification of privilege or 

duty to refuse to give evidence 

under the law of the State of 

origin (Article 11, b)

Defendants believe that Nokia Canada Inc. does not 

benefit from any privilege, and does not endorse the 

assertion of any such privilege or duty.

17. The fees and costs incurred will 

be borne by

Defendants will bear the reimbursable costs associated 

with this request, including costs for production of 

documents and the time for the witness to prepare for 

or attend the examination. 

So ORDERED and SIGNED this ____ day of ______________, 2020.

The Honorable Alan D Albright

U.S. District Court Judge

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EXHIBIT D1

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DOCUMENTS REQUESTED

Defendants Dell Technologies Inc., Dell Inc., EMC Corporation, and VMware, Inc. 

(collectively, “Defendants”) request the production of the documents described below.

DEFINITIONS

The following definitions are applicable to terms employed in responding to this request:

1. “Accused Product” or “Accused Products” shall refer to any device, product, or other thing 

that Plaintiff is permitted to accuse of infringing the Asserted Patent in this Action. A copy 

of the Complaint in case number 6:20-cv-00486-ADA is attached as Exhibit D3. In 

referring to any device, product, or other thing as an “Accused Product,” Defendants in no 

way communicate their agreement that it infringes the Asserted Patent.

2. “Action” shall refer to the above-captioned proceeding in the United States District Court 

for the Western District of Texas, with case number 6:20-cv-00486-ADA.

3. “Asserted Claim” shall refer to each claim of the Asserted Patent that Plaintiff contends 

Defendants infringe. 

4. “Asserted Patent” shall refer to U.S. Patent No. 7,092,360 and any patent applications 

related thereto. 

5. “Communication” shall mean, without limitation, any written, oral, or other transmission 

of information, including but not limited to emails.

6. “Complaint” shall refer to the Complaint (including exhibits) that Plaintiff filed on June 2, 

2020 as docket number 1 in this Action, as may be amended. 

7. “Concerning,” “refer(s) to,” “related to,” “reflecting,” and “relating to” shall mean directly 

or indirectly relating to, referring to, mentioning, reflecting, pertaining to, evidencing, 

illustrating, involving, describing, discussing, commenting on, embodying, responding to, 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 13 of 90
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supporting, contradicting, or constituting (in whole or in part), as the context makes 

appropriate.

8. “Defendants” or “Defendant” shall refer to Dell Technologies Inc., Dell Inc., EMC 

Corporation, and VMware, Inc., and any and all of their then-current or prior subsidiaries, 

parents, affiliates, divisions, successors, predecessors, agents, employees, representatives, 

directors, officers, trustees, and attorneys, or any other person or entity acting in whole or 

in part in concert with any of the foregoing, directly or indirectly. 

9. “Document” shall include, without limitation, all documents, electronically stored 

information, and tangible things within the scope of the Federal Rules of Civil Procedure, 

including Rule 34. Federal Rules of Civil Procedure 34 permits discovery of: “(A) 

documents or electronically stored information—including writings, drawings, graphs, 

charts, photographs, sound recordings, images, and other data or data compilations—stored 

in any medium from which information can be obtained either directly or, if necessary, 

after translation by the responding party into a reasonably usable form; or (B) any 

designated tangible things.” 

10. “Employee” shall refer to any officer, director, partner, employee, representative, or agent.

11. “Licensee(s)” shall refer to any entity having a license, assignment, covenant not to sue, or 

other understanding, written, oral or implied, that the entity has any rights to the Asserted 

Patent, any Related Patents, or any Related Applications, may practice one or more claims 

of the Asserted Patent and/or that Plaintiff will not file suit or otherwise enforce against 

that entity one or more claims of the Asserted Patent or any Related Patent or Related 

Application.

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12. “Named Inventor” shall refer to any individual who is listed as an inventor on the Asserted 

Patent or any Related Patent or Related Application thereof.

13. “Person” shall refer to any natural person, firm, association, partnership, government 

agency, corporation, proprietorship, or other entity and its officers, directors, partners, 

employee, representatives, and agents.

14. The terms “Plaintiff,” and/or “WSOU” shall refer to the responding Plaintiff WSOU 

Investments, LLC d/b/a Brazos Licensing and Development, and any and all of its thencurrent or prior subsidiaries, parents, affiliates, divisions, successors, predecessors, agents, 

employees, representatives, directors, officers, trustees, and attorneys, or any other person 

or entity acting in whole or in part in concert with any of the foregoing, directly or 

indirectly.

15. “Prior Art” encompasses, without limitation, the subject matter described in each and every 

subdivision of 35 U.S.C. §§ 102 and 103, and includes, but is not limited to, memoranda, 

notes, manuals, interviews, testing data, disclosures, prototypes, correspondence, 

drawings, papers, articles, patents, printed publications, public uses, demonstrations, offers 

for sale or license, and sales.

16. “Related Application(s)” means any and all applications related to the Asserted Patent, 

including any provisional or non-provisional applications, continuations, continuations- inpart, divisions, interferences, reexaminations, re-issues, parents, foreign counterpart 

applications, and any other applications disclosing, describing or claiming any invention 

disclosed, described or claimed in the Asserted Patent, or claiming the benefit of the filing 

date of any application whose benefit is claimed in the Asserted Patent, whether or not 

abandoned and whether or not issued.

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17. “Related Patent(s)” means any and all U.S. or foreign patents based upon or related to any 

Related Application(s) or Asserted Patent, including any patents or applications that may 

have been opposed, reexamined, re-issued or subjected to any validity or nullity 

proceeding.

18. “Third Party” shall refer to any person other than Plaintiff or Defendants.

19. “You,” “Your,” “Yours” shall refer to Nokia Canada Inc., and any and all of its then-current 

or prior subsidiaries, parents, affiliates, divisions, successors, predecessors, agents, 

employees, representatives, directors, officers, trustees, and attorneys, or any other person 

or entity acting in whole or in part in concert with any of the foregoing, directly or 

indirectly.

20. “Product(s)” means a machine, manufacture, apparatus, device, instrument, mechanism, 

appliance, software, service, process, or an assemblage of components/parts (either 

individually or collectively) that are designed to function together electronically, 

mechanically, or otherwise, including any offered for sale or under development.

21. Any pronouns shall be construed to refer to the masculine, feminine, or neutral gender, in 

singular or plural, as in each case is most appropriate.

22. The singular form of any word shall be construed to also include the plural, and vice-versa.

23. The word “each” shall be construed to mean “each and every.”

24. The words “and” and “or” shall be construed conjunctively or disjunctively, whichever 

makes the request more inclusive.

25. The words “any” and “all” shall be construed to mean “any and all.”

INSTRUCTIONS

1. In responding to the document requests set forth below, please furnish all responsive and 

non-privileged information that is available to You.

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2. If production of any responsive Documents are being withheld on the ground of the 

attorney-client privilege, attorney work product, or any other privilege, immunity, or 

protection, please provide a privilege log with the following information for each such 

Document: (a) the name of the Document; (b) the name of the person(s) who prepared the 

Document; (c) the name of the person(s) to whom the Document was directed or circulated; 

(d) the date(s) on which the Document was prepared or transmitted; (e) the name of the 

person(s) now in possession of the Document; (f) a description of the subject matter of the 

Document; and (g) the specific nature of the privilege or protection claimed with respect 

to the Document.

3. The Court’s interim protective order in the Order Governing Proceedings entered in this 

manner shall govern the disclosure of confidential information in this Action. See Exhibit 

D4 at pp. 3–4.

4. Upon entry of a final protective order in this manner that protective order shall govern the 

disclosure of confidential information in this Action.

DOCUMENT REQUESTS

1. Documents and Communications concerning the preparation, filing, or 

prosecution of any of the patent applications related to the Asserted Patent.1

 This includes, but 

is not limited to:

a. A complete copy of the prosecution history and prosecution files for the 

 1 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such materials 

will also be relevant to defenses relating to damages, including the availability of noninfringing alternatives.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 17 of 90
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Asserted Patent;

b. Drafts of the patent applications, drawings, and documents in the 

possession, custody, or control of You or any attorney or agent involved 

in the prosecution of the Asserted Patent, except to the extent these 

documents are entitled to attorney-client privilege or work product 

protection;

c. Patents, patent applications, or other publications reviewed in connection 

with the prosecution by anyone who participated in the prosecution of the 

Asserted Patent; 

d. Prior Art cited or considered in connection with the prosecution of the 

Asserted Patent;

e. Internal memoranda and internal Communications regarding the 

prosecution of the Asserted Patent; and

f. Documents referring or relating to or evidencing any decision by You, on 

Your behalf, or that you are aware of regarding what documents 

(including without limitation patents or printed publications) to cite 

during prosecution of the Asserted Patent.

2. Documents and Communications concerning the preparation, filing, or 

prosecution of any of the patent applications related to Related Patents and Related Applications.2

 

 2 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such materials 

will also be relevant to defenses relating to damages, including the availability of noninfringing alternatives.

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This includes, but is not limited to:

a. A complete copy of the prosecution histories and prosecution files for 

any Related Patents and Related Applications;

b. Drafts of patent applications, drawings, and documents in the possession, 

custody, or control of You or any attorney or agent involved in the 

prosecution of any Related Patents or Related Applications, except to the 

extent these documents are entitled to attorney-client privilege or work 

product protection;

c. Patents, patent applications, or other publications reviewed in connection 

with the prosecution by anyone who participated in the prosecution of 

any Related Patents or Related Applications; 

d. Prior Art cited or considered in connection with the prosecution of any 

Related Patents or Related Applications;

e. Internal memoranda and internal Communications regarding the 

prosecution of any Related Patents or Related Applications; and

f. Documents referring or relating to or evidencing any decision by You, on 

Your behalf, or that you are aware of regarding what documents 

(including without limitation patents or printed publications) to cite 

during prosecution of any Related Patents or Related Applications.

3. Documents and Communications related to each effort by You, on Your behalf, 

or that you are aware of to obtain patent protection, in the United States or in the countries 

designated in the PCT application for the Asserted Patent, for the subject matter described and/or 

claimed in the Asserted Patent, covering the period from December 28, 2001 through the last 

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action taken by or on behalf of the inventor or any assignee in connection with the prosecution of 

the Asserted Patent or any Related Patent or Related Application.

3

4. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the conception of the subject matter described and/or claimed in the 

Asserted Patent, prior to December 28, 2001.4

5. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the testing, design, and development of the subject matter described 

and/or claimed in the Asserted Patent, prior to the last action taken by or on behalf of the inventor 

or any assignee in connection with the prosecution of the Asserted Patent or any Related Patent 

or Related Application.5

6. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the reduction to practice of the subject matter described and/or claimed 

in the Asserted Patent, prior to the last action taken by or on behalf of the inventor or any assignee 

in connection with the prosecution of the Asserted Patent or any Related Patent or Related 

 3 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). 4 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 5 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 20 of 90
20

Application.6

7. Statements, articles, abstracts, publications, and Product literature made by, or 

under the direction of, any of the Named Inventors concerning the subject matter described and/or 

claimed in the Asserted Patent, prior to the last action taken by or on behalf of the inventor or any 

assignee in connection with the prosecution of the Asserted Patent or any Related Patent or 

Related Application.7

8. Laboratory notebooks, technical memoranda, technical files, diaries, appointment 

calendars, and trip reports, in complete unredacted form, of the Named Inventors, or made under 

the direction of the Named Inventors, concerning the subject matter described and/or claimed in 

the Asserted Patent, prior to the last action taken by or on behalf of the inventor or any assignee 

in connection with the prosecution of the Asserted Patent or any Related Patent or Related 

Application.8

9. Documents sufficient to identify any Person (whether or not named as an inventor) 

involved in the conception, research, testing, design, development, and reduction to practice of 

any element of any of the inventions described and/or claimed in the Asserted Patent, and to 

 6 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 7 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 8 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 21 of 90
21

understand their role, prior to the last action taken by or on behalf of the inventor or any assignee 

in connection with the prosecution of the Asserted Patent or any Related Patent or Related 

Application.9

10. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the conception of the subject matter described and/or claimed in Related 

Patents or Related Applications, prior to December 28, 2001.10

11. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the testing, design, and development of the subject matter described 

and/or claimed in Related Patents or Related Applications, prior to the last action taken by or on 

behalf of the inventor or any assignee in connection with the prosecution of the Asserted Patent 

or any Related Patent or Related Application.11

12. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding the reduction to practice of the subject matter described and/or claimed 

in Related Patents or Related Applications, prior to the last action taken by or on behalf of the 

inventor or any assignee in connection with the prosecution of the Asserted Patent or any Related 

 9 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 10 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 11 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 22 of 90
22

Patent or Related Application.12

13. Statements, articles, abstracts, publications, and Product literature made by, or 

under the direction of, any of the Named Inventors concerning the subject matter described and/or 

claimed in Related Patents or Related Applications, prior to the last action taken by or on behalf 

of the inventor or any assignee in connection with the prosecution of the Asserted Patent or any 

Related Patent or Related Application.13

14. Laboratory notebooks, technical memoranda, technical files, diaries, appointment 

calendars, and trip reports, in complete unredacted form, of the Named Inventors, or made under 

the direction of the Named Inventors, concerning the subject matter described and/or claimed in 

Related Patents or Related Applications, prior to the last action taken by or on behalf of the 

inventor or any assignee in connection with the prosecution of the Asserted Patent or any Related 

Patent or Related Application.14

15. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums that concern or show the structure, functions, or operation of, or that constitute 

embodiments of, any invention disclosed or claimed in the Asserted Patent, regardless of whether 

 12 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 13 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 14 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 23 of 90
23

such embodiment was commercialized, and regardless of whether or not it worked properly, from 

December 28, 2001 to the present.

15

16. Documents and Communications relating to Your assignment policies with 

inventors applicable to the invention described and/or claimed in the Asserted Patent.16 This 

includes but is not limited to:

a. Assignment agreements with the inventors of the inventions described 

and/or claimed in the Asserted Patent;

b. Cost-sharing or profit-sharing agreements with the inventors of the 

inventions described and/or claimed in the Asserted Patent; and

c. Remuneration agreements with inventors of the inventions described 

and/or claimed in the Asserted Patent.

17. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums concerning any of the following activities with regard to the subject matter 

described and/or claimed in the Asserted Patent:

 15 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to defenses relating to 

damages, including the availability of non-infringing alternatives and failure to mark. 16 Such materials will be relevant to issue regarding Plaintiffs standing to bring the current suit 

and joinder of the proper parties. Such materials will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“established profitability of the product made under the patent”; “the character of the 

commercial embodiment of it as owned and produced by the licensor”; and “portion of the 

realizable profit that should be credited to the invention”; among others things. GeorgiaPacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1119–20 (S.D.N.Y. 1970). 

Courts in the United States consider these Georgia-Pacific factors when determining a 

reasonable royalty for patent infringement damages. See, e.g., Lucent Technologies, Inc. v. 

Gateway, Inc., 580 F. 3d 1301, 1324–37 (Fed. Cir. 2009). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 24 of 90
24

a. First written description and/or drawing of such subject matter;

b. First publication of such subject matter;

c. First promotion of such subject matter;

d. First advertisement of such subject matter;

e. First offer for sale of such subject matter;

f. First sale of such subject matter;

g. First public disclosure of such subject matter;

h. First public use of such subject matter; and

i. Experimental uses or alleged experimental uses of such subject matter.17

18. Documents concerning the making, using, testing, selling, or disclosure, anywhere 

in the world, of any embodiment described and/or claimed in the Asserted Patent, or any Product, 

process, equipment, or service embodying or using such invention, prior to December 28, 2001.

18

19. Documents relating to any Prior Art search performed by You, on Your behalf, or 

that you are aware of, relating to the Asserted Patent, including, but not limited to, any search 

methodology or results, prior to July 22, 2017.

19

20. Documents relating to any Prior Art search performed by You, on Your behalf, or 

that you are aware of, relating to any Related Patent or Related Application, including, but not 

 17 Such materials will be relevant to defenses, such as invalidity (including obviousness, 

secondary considerations regarding obviousness, and anticipation) and inequitable conduct. 18 Such materials will be relevant to defenses, such as invalidity (including obviousness, 

secondary considerations regarding obviousness, and anticipation) and inequitable conduct. 19 Such materials will be relevant to defenses, such as invalidity (including obviousness, 

secondary considerations regarding obviousness, and anticipation) and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 25 of 90
25

limited to, any search methodology or results, from December 21, 2001 to July 22, 2017.

20

21. Communications, studies, comparisons, reports, surveys, evaluations, opinions, or 

memorandums regarding whether any claim in the Asserted Patent is invalid, valid, enforceable, 

or unenforceable (including any Prior Art or alleged Prior Art), prior to July 22, 2017.

21

22. Documents that concern the commercial success (a secondary consideration 

regarding obviousness of the Asserted Patent as considered under 35 U.S.C. § 103) of any 

Product, process, equipment, or service that has a nexus to any invention claimed in the Asserted 

Patent (i.e., the Product, process, equipment, or service is “essentially the claimed invention”22), 

from December 28, 2001 to July 22, 2017.

23 

23. Documents that concern any copying by others (a secondary consideration 

regarding obviousness of the Asserted Patent as considered under 35 U.S.C. § 103) of any 

invention claimed in the Asserted Patent, or of any Product, process, equipment, or service that 

embodies or uses such invention, from December 28, 2001 to July 22, 2017.

24

 20 Such materials will be relevant to defenses, such as invalidity (including obviousness, 

secondary considerations regarding obviousness, and anticipation) and inequitable conduct. 21 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as invalidity (including obviousness, secondary considerations 

regarding obviousness, anticipation, patent-eligibility, written description, indefiniteness, and 

enablement) and inequitable conduct. 22 Fox Factory, Inc. v. SRAM, LLC, 944 F. 3d 1366, 1374 (Fed. Cir. 2019). 23 Such materials will be relevant to defenses, such as invalidity (including obviousness and 

secondary considerations regarding obviousness). Such materials will also be relevant to 

quantifying any alleged damages pursuant the Georgia-Pacific factors, which require 

consideration of the: “established profitability of the product made under the patent”; “the 

character of the commercial embodiment of it as owned and produced by the licensor”; and 

“portion of the realizable profit that should be credited to the invention”; among others 

things. Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1119–20 

(S.D.N.Y. 1970). Courts in the United States consider these Georgia-Pacific factors when

determining a reasonable royalty for patent infringement damages. See, e.g., Lucent 

Technologies, Inc. v. Gateway, Inc., 580 F. 3d 1301, 1324–37 (Fed. Cir. 2009). 24 Such materials will be relevant to defenses, such as invalidity (including obviousness and 

secondary considerations regarding obviousness). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 26 of 90
26

24. Documents that concern any third party’s praise, criticism, acknowledgments, 

awards, or discussion of the significance (a secondary consideration regarding obviousness of the 

Asserted Patent as considered under 35 U.S.C. § 103) of any invention claimed in the Asserted 

Patent, or of any Product, process, equipment, or service that embodies or uses such invention, 

from December 28, 2001 to July 22, 2017.

25 

25. Communications (or Documents relating thereto) between You and Plaintiff, from 

December 21, 2001 to the present, relating to:

a. The Asserted Patent, Related Patents, Related Applications, or any

inventions disclosed therein;

b. This Action (including, without limitation, the initiation of this Action

and the actual or anticipated costs, profits, and outcome of this Action); 

and

c. Any Defendant, any of Defendants’ technology, or any of the Accused 

Products.26 

26. Communications (or Documents relating thereto) between You and any of the 

Named Inventors, from December 21, 2001 to the present, relating to:

a. The Asserted Patent, Related Patents, Related Applications, or any

inventions disclosed therein;

b. This Action (including, without limitation, the initiation of this Action

 25 Such materials will be relevant to defenses, such as invalidity (including obviousness and 

secondary considerations regarding obviousness). 26 Such materials will be relevant to quantifying any alleged damages. Such materials will also 

be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 27 of 90
27

and the actual or anticipated costs, profits, and outcome of this Action); 

and

c. Any Defendant, any of Defendants’ technology, or any of the Accused 

Products.27

27. Negotiations, agreements, draft agreements between You and Plaintiff, from 

December 21, 2001 to the present, relating to:

a. The Asserted Patent, Related Patents, Related Applications, or any

inventions disclosed therein;

b. This Action (including, the initiation of this Action and the actual or 

anticipated costs, profits, and outcome of this Action); or

c. Any Defendant, any of Defendants’ technology, or any of the Accused 

Products.28 

28. Negotiations, agreements, draft agreements between You and any Named 

Inventor, from December 21, 2001 to the present, relating to:

a. The Asserted Patent, Related Patents, Related Applications, or any

inventions disclosed therein;

b. This Action (including the initiation of this Action and the actual or 

 27 Such materials will be relevant to quantifying any alleged damages. Such materials will also 

be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 28 Such materials will be relevant to quantifying any alleged damages. Such materials will also 

be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 28 of 90
28

anticipated costs, profits, and outcome of this Action); or

c. Any Defendant, any of Defendants’ technology, or any of the Accused 

Products.29

29. Documents and Communications concerning any statement, concern, or 

contention by You, any Named Inventor, or any person involved in the prosecution of the 

Asserted Patent, regarding the scope of any of the claims or the interpretation or construction of 

any term or phrase in the claims of the Asserted Patent, prior to July 22, 2017.

30

30. Documents concerning the alleged infringement of any of the claims of the 

Asserted Patent, including studies, comparisons, reports, surveys, and any evaluation, opinion, 

memorandum, or report, comparing any of the Accused Products or any portion, feature, and/or 

aspect thereof to any limitation in any claim of the Asserted Patent, prior to July 22, 2017, except 

to the extent these documents are entitled to attorney-client privilege or work product 

protection.31 

31. Documents and Communications concerning any decision to pursue or not to 

pursue a claim infringement of the Asserted Patent against any Defendant, from December 21, 

2001 to July 22, 2017, except to the extent these documents are entitled to attorney-client

 29 Such materials will be relevant to quantifying any alleged damages. Such materials will also 

be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 30 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement) and inequitable conduct. 31 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 29 of 90
29

privilege or work product protection.32 

32. Documents and Communications concerning any decision to pursue or not to 

pursue a claim infringement of any Related Patent against any Defendant, from December 21, 

2001 to July 22, 2017, except to the extent these documents are entitled to attorney-client 

privilege or work product protection.33 

33. Documents comprising or memorializing any sworn statements, including 

affidavits, declarations, trial and deposition testimony related to the subject matter of the Asserted 

Patent, by any of the Named Inventors or any person involved in the prosecution of the Asserted 

Patent.34 

34. Documents comprising or memorializing any sworn statements, including 

affidavits, declarations, trial and deposition testimony related to the subject matter of any Related 

Patents or Related Applications, by any of the Named Inventors or any person involved in the 

prosecution of the Asserted Patent.35 

35. Documents and Communications, relating to or concerning the assignment, 

licensing, acquisition, financial interest, security interest, sale, transfer of rights (in whole or in 

 32 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the “commercial relationship between the 

licensor and licensee”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 33 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the “commercial relationship between the 

licensor and licensee”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 34 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement) and inequitable conduct. 35 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement) and inequitable conduct. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 30 of 90
30

part), or any other disposition of, or any offers to buy, sell, or license the Asserted Patent or any

Related Patents or Related Applications.36 This includes, but is not limited to:

a. Agreements granting rights, assignments, licenses, covenants, royalties, 

settlements, agreements releasing any third party from liability for 

infringement, and covenants not to sue, involving or concerning the 

Asserted Patent, Related Patents, or Related Applications;

b. Negotiations, discussions, or other Communications relating to the 

Documents referenced in sub-paragraph a; and

c. Communications (or documents relating thereto) between You and any 

potential Licensee or purchaser of the Asserted Patent, Related Patents or 

Related Applications. 

36. Documents and Communications sufficient to identify any and all entities that 

have acquired any right, financial interest, or security interest in the Asserted Patent.37 

37. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

 36 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 37 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 31 of 90
31

regarding ownership of the Asserted Patent, from December 21, 2001 to July 22, 2017.

38

38. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

regarding any standstills involving or concerning the Asserted Patent, from December 21, 2001

to July 22, 2017.

39 

39. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

regarding sales, royalties, covenants, or licenses involving or concerning the Asserted Patent, 

from December 21, 2001 to July 22, 2017.

40

 38 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 39 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 40 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 32 of 90
32

40. Documents and Communications concerning any business plans, marketing plans, 

marketing efforts, advertising plans, advertising efforts, promotional programs, or offers for sale, 

involving or concerning the Asserted Patent, from December 21, 2001 to July 22, 2017.

41 

41. Documents and Communications sufficient to identify any and all entities that 

have acquired any right, financial interest, or security interest in Related Patents or Related 

Applications.42 

42. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

regarding ownership of Related Patents or Related Applications, from December 21, 2001 to July 

22, 2017.

43

43. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

regarding any standstills involving or concerning Related Patents or Related Applications, from 

 41 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 42 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 43 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 33 of 90
33

December 21, 2001 to July 22, 2017.

44 

44. Studies, comparisons, reports, surveys, evaluations, opinions, or memorandums, 

regarding sales, royalties, covenants, or licenses involving or concerning Related Patents or 

Related Applications, from December 21, 2001 to July 22, 2017.

45

45. Documents and Communications concerning any business plans, marketing plans, 

marketing efforts, advertising plans, advertising efforts, promotional programs, or offers for sale, 

involving or concerning Related Patents or Related Applications, from December 21, 2001 to 

July 22, 2017.

46 

46. Documents and Communications concerning any budgets, forecasts, revenues, 

licensing strategies, projections, costs, sales, expenses, margins, profits (including gross and net 

 44 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 45 Such materials will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. Such materials will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 46 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 34 of 90
34

profits), or any other means for generating revenue from any Product, process, equipment, or 

service that You allege or believe embodies any claim of the Asserted Patent, from December 21, 

2001 to present.47

47. Documents related to the relationship between You and potential or actual 

Licensees regarding the Asserted Patent, including agreements and draft agreements with such 

potential Licensees, Communications with such potential Licensees, and Documents exchanged 

with such potential Licensees that relate to such patents.48

48. Documents related to the relationship between You and potential or actual 

Licensees regarding the Related Patents or Related Applications, including agreements and draft 

agreements with such potential Licensees, Communications with such potential Licensees, and 

Documents exchanged with such potential Licensees that relate to such patents.49

49. Documents reflecting any analyses or projections regarding the financial impact 

and duration thereof on You or any other assignee or Licensee due to the alleged infringement of 

 47 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 48 Such materials will be relevant to patent exhaustion and license defenses, as well as, to 

quantifying any alleged damages pursuant the Georgia-Pacific factors, which require 

consideration of the: “royalties received by the patentee”; “rates paid by the licensee for the 

use of other patents comparable to the patent in suit”; “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 49 Such materials will be relevant to patent exhaustion and license defenses, as well as, to 

quantifying any alleged damages pursuant the Georgia-Pacific factors, which require 

consideration of the: “royalties received by the patentee”; “rates paid by the licensee for the 

use of other patents comparable to the patent in suit”; “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 35 of 90
35

the Asserted Patent, from December 21, 2001 to July 22, 2017.

50

50. Valuations of the Asserted Patent (either alone, or together with other patents or 

consideration, including as part of an intellectual property portfolio), from December 21, 2001 to 

July 22, 2017.

51

51. Valuations of the Related Patents or Related Applications(either alone, or together 

with other patents or consideration, including as part of an intellectual property portfolio), from 

December 21, 2001 to July 22, 2017.

52

52. Documents and Communications concerning or relating to an appraisal or 

valuation of any license, covenant, royalty, technology transfer, or authorization-to-use 

agreement that relates to the Asserted Patent, including appraisals or valuations performed for tax 

purposes, from December 21, 2001 to July 22, 2017.

53 

 50 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 51 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 52 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 53 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “established profitability of the product 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 36 of 90
36

53. Documents and Communications concerning or relating to any right, title, or 

interest in any litigation or action involving any of the Asserted Patent, Related Patents, or Related 

Applications, including analyses or opinions related thereto, from December 21, 2001 to July 22, 

2017.

54 

54. Documents sufficient to identify any licensing policy that You may have, 

including without limitation policies and practices relating to taking or granting licenses, relating

to any of the Asserted Patent, Related Patents, or Related Applications.55

55. Documents and Communications concerning whether You and/or Your Licensees 

have complied with the marking or notice provisions of 35 U.S.C. § 287(a)56 with respect to the 

 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor”; and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 54 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “established profitability of the product 

made under the patent”; “character of the commercial embodiment of it as owned and 

produced by the licensor” and “portion of the realizable profit that should be credited to the 

invention”; among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 55 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the “licensor’s established policy and 

marketing program to maintain his patent monopoly by not licensing others to use the 

invention or by granting licenses under special conditions designed to preserve that 

monopoly”, among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 56 35 U.S.C. § 287(a) states: “Patentees, and persons making, offering for sale, or selling within 

the United States any patented article for or under them, or importing any patented article 

into the United States, may give notice to the public that the same is patented, either by 

fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the 

patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an 

address of a posting on the Internet, accessible to the public without charge for accessing the 

address, that associates the patented article with the number of the patent, or when, from the 

character of the article, this can not be done, by fixing to it, or to the package wherein one or 

more of them is contained, a label containing a like notice. In the event of failure so to mark, 

no damages shall be recovered by the patentee in any action for infringement, except on 

proof that the infringer was notified of the infringement and continued to infringe thereafter, 

in which event damages may be recovered only for infringement occurring after such notice. 

Filing of an action for infringement shall constitute such notice.” 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 37 of 90
37

Asserted Patent, including but not limited to one copy or sample of each and every Product and/or 

package or other material on which the patent number of the Asserted Patent has been or are 

marked.57

56. Documents sufficient to identify, and to show the design, operation, or functioning 

of, any commercially acceptable, non-infringing (potential or actual) alternative to the subject 

matter claimed in the Asserted Patent, after August 15, 2006.

58

57. Documents sufficient to identify, and to show the design, operation, or functioning 

of any technically acceptable, non-infringing (potential or actual) alternative to the subject matter 

claimed in the Asserted Patent, after August 15, 2006.

59

58. Documents sufficient to identify the nature and scope of any rights in the Asserted 

Patent that You have obtained and/or retained at any time, including, without limitation, any right 

to control litigation, future royalties, payments for licenses of the Asserted Patent, or payments 

relating to or resulting from the outcome of any litigation involving or relating to the Asserted 

Patent (including without limitation the Action).60

59. Documents and Communications You exchanged with any trade associations, 

 57 Such materials will be relevant to defenses relating to damages, including failure to mark. 58 Such materials will be relevant to defenses relating to damages, including the availability of 

non-infringing alternatives. 59 Such materials will be relevant to defenses relating to damages, including the availability of 

non-infringing alternatives. 60 Such materials will be relevant to issue regarding Plaintiffs standing to bring the current suit 

and joinder of the proper parties. Such materials will be relevant to patent exhaustion and 

license defenses, as well as, to quantifying any alleged damages pursuant the Georgia-Pacific

factors, which require consideration of the: “royalties received by the patentee”; “rates paid 

by the licensee for the use of other patents comparable to the patent in suit”; “established 

profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20.

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38

standards setting organizations, or industry working groups, relating to the Asserted Patent, or 

the inventions disclosed therein, from December 28, 2001 to the present.61 This includes but is 

not limited to: 

a. Communications with trade associations, standards setting organizations, 

or industry trade groups relating to the Asserted Patent, or the inventions 

disclosed therein;

b. Technical and non-technical submissions to trade associations, standards 

setting organizations, or industry trade groups relating to the Asserted 

Patent, or the inventions disclosed therein;

c. Intellectual property declarations to any trade associations, standards 

setting organizations, or industry trade groups relating to the Asserted 

Patent, or the inventions disclosed therein; and

d. Documents related to trade associations, standards setting organizations, 

or industry trade groups meetings (including working group meetings) 

where the subject matter described and/or claimed in the Asserted Patent 

was discussed.

60. Documents and Communications You exchanged with any trade associations, 

standards setting organizations, or industry working groups, relating to Related Patents, Related 

Applications, or the inventions disclosed therein, from December 28, 2001 to the present.62 This 

 61 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). 62 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 39 of 90
39

includes but is not limited to: 

a. Communications with trade associations, standards setting organizations, 

or industry trade groups relating to Related Patents, Related Applications, 

or the inventions disclosed therein;

b. Technical and non-technical submissions to trade associations, standards 

setting organizations, or industry trade groups relating to Related Patents, 

Related Applications, or the inventions disclosed therein;

c. Intellectual property declarations to any trade associations, standards 

setting organizations, or industry trade groups relating to Related Patents, 

Related Applications, or the inventions disclosed therein; and

d. Documents related to trade associations, standards setting organizations, 

or industry trade groups meetings (including working group meetings) 

where the subject matter described and/or claimed in Related Patents was 

discussed.

61. Documents (including without limitation correspondence, notes, meeting minutes, 

proposals, statements, and other Communications) regarding what constitutes Fair Reasonable 

and Non-Discriminatory (“FRAND”) or Reasonable and Non-Discriminatory (“RAND”) terms 

relating to patent licensing in the technical space related to the subject matter of the Asserted 

Claims.63 

 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). 63 Such materials will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 40 of 90
40

62. Documents sufficient to identify all sections and/or subsection of any standard or 

draft standard to which You believe the Asserted Patent are essential.64

63. Documents sufficient to identify all sections and/or subsection of any standard or 

draft standard to which You believe the Asserted Patent is relevant to.

65

64. Agreements that You have concerning patents declared essential to or any 

standard related to the subject matter of the Asserted Patent, such as standards maintained by the 

Institute of Electrical and Electronics Engineers, Internet Engineering Task Force, and the 

European Telecommunications Standards Institute.66

 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 64 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 65 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 66 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to quantifying any 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 41 of 90
41

65. Agreements that You have concerning patents that You contend are relevant to 

standards related to the subject matter of the Asserted Patent, such as standards maintained by 

the Institute of Electrical and Electronics Engineers, Internet Engineering Task Force, and the 

European Telecommunications Standards Institute.67

66. Documents sufficient to identify patents of which You are aware that have been 

contented to be essential to, or relevant to, standards or draft standard for which the Asserted 

Patent has been contented to be essential to, or relevant to, such as standards maintained by the 

Institute of Electrical and Electronics Engineers, Internet Engineering Task Force, and the 

European Telecommunications Standards Institute.68

 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 67 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 68 Such materials will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such materials will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 42 of 90
42

67. Documentssufficient to show Your past and present electronic data and Document 

destruction and retention policies with respect to the Documents produced in response to the 

above requests.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 43 of 90
EXHIBIT D2

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 44 of 90
2

ORAL EXAMINATION TOPICS REQUESTED

Defendants Dell Technologies Inc., Dell Inc., EMC Corporation, and VMware, Inc. 

(collectively, “Defendants”) seek to ask questions on topics described below.

DEFINITIONS

The following definitions are applicable to terms employed in responding to this request:

1. “Accused Product” or “Accused Products” shall refer to any device, product, or other thing 

that Plaintiff is permitted to accuse of infringing the Asserted Patent in this Action. A copy 

of the Complaint in case number 6:20-cv-00486-ADA is attached as Exhibit D3. In 

referring to any device, product, or other thing as an “Accused Product,” Defendants in no 

way communicate their agreement that it infringes the Asserted Patent.

2. “Action” shall refer to the above-captioned proceeding in the United States District Court 

for the Western District of Texas, with case number 6:20-cv-00486-ADA.

3. “Asserted Claim” shall refer to each claim of the Asserted Patent that Plaintiff contends 

Defendants infringe. 

4. “Asserted Patent” shall refer to U.S. Patent No. 7,092,360 and any patent applications 

related thereto. 

5. “Communication” shall mean, without limitation, any written, oral, or other transmission 

of information, including but not limited to emails.

6. “Complaint” shall refer to the Complaint (including exhibits) that Plaintiff filed on June 2, 

2020 as docket number 1 in this Action, as may be amended. 

7. “Concerning,” “refer(s) to,” “related to,” “reflecting,” and “relating to” shall mean directly 

or indirectly relating to, referring to, mentioning, reflecting, pertaining to, evidencing, 

illustrating, involving, describing, discussing, commenting on, embodying, responding to, 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 45 of 90
3

supporting, contradicting, or constituting (in whole or in part), as the context makes 

appropriate.

8. “Defendants” or “Defendant” shall refer to Dell Technologies Inc., Dell Inc., EMC 

Corporation, and VMware, Inc., and any and all of their then-current or prior subsidiaries, 

parents, affiliates, divisions, successors, predecessors, agents, employees, representatives, 

directors, officers, trustees, and attorneys, or any other person or entity acting in whole or 

in part in concert with any of the foregoing, directly or indirectly. 

9. “Document” shall include, without limitation, all documents, electronically stored 

information, and tangible things within the scope of the Federal Rules of Civil Procedure, 

including Rule 34. Federal Rules of Civil Procedure 34 permits discovery of: “(A) 

documents or electronically stored information—including writings, drawings, graphs, 

charts, photographs, sound recordings, images, and other data or data compilations—stored 

in any medium from which information can be obtained either directly or, if necessary, 

after translation by the responding party into a reasonably usable form; or (B) any 

designated tangible things.” 

10. “Employee” shall refer to any officer, director, partner, employee, representative, or agent.

11. “Licensee(s)” shall refer to any entity having a license, assignment, covenant not to sue, or 

other understanding, written, oral or implied, that the entity has any rights to the Asserted 

Patent, any Related Patents, or any Related Applications, may practice one or more claims 

of the Asserted Patent and/or that Plaintiff will not file suit or otherwise enforce against 

that entity one or more claims of the Asserted Patent or any Related Patent or Related 

Application.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 46 of 90
4

12. “Named Inventor” shall refer to any individual who is listed as an inventor on the Asserted 

Patent or any Related Patent or Related Application thereof.

13. “Person” shall refer to any natural person, firm, association, partnership, government 

agency, corporation, proprietorship, or other entity and its officers, directors, partners, 

employee, representatives, and agents.

14. The terms “Plaintiff,” and/or “WSOU” shall refer to the responding Plaintiff WSOU 

Investments, LLC d/b/a Brazos Licensing and Development, and any and all of its thencurrent or prior subsidiaries, parents, affiliates, divisions, successors, predecessors, agents, 

employees, representatives, directors, officers, trustees, and attorneys, or any other person 

or entity acting in whole or in part in concert with any of the foregoing, directly or 

indirectly.

15. “Prior Art” encompasses, without limitation, the subject matter described in each and every 

subdivision of 35 U.S.C. §§ 102 and 103, and includes, but is not limited to, memoranda, 

notes, manuals, interviews, testing data, disclosures, prototypes, correspondence, 

drawings, papers, articles, patents, printed publications, public uses, demonstrations, offers 

for sale or license, and sales.

16. “Related Application(s)” means any and all applications related to the Asserted Patent, 

including any provisional or non-provisional applications, continuations, continuations- inpart, divisions, interferences, reexaminations, re-issues, parents, foreign counterpart 

applications, and any other applications disclosing, describing or claiming any invention 

disclosed, described or claimed in the Asserted Patent, or claiming the benefit of the filing 

date of any application whose benefit is claimed in the Asserted Patent, whether or not 

abandoned and whether or not issued.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 47 of 90
5

17. “Related Patent(s)” means any and all U.S. or foreign patents based upon or related to any 

Related Application(s) or Asserted Patent, including any patents or applications that may 

have been opposed, reexamined, re-issued or subjected to any validity or nullity 

proceeding.

18. “Third Party” shall refer to any person other than Plaintiff or Defendants.

19. “You,” “Your,” “Yours” shall refer to Nokia Canada Inc., and any and all of its then-current 

or prior subsidiaries, parents, affiliates, divisions, successors, predecessors, agents, 

employees, representatives, directors, officers, trustees, and attorneys, or any other person 

or entity acting in whole or in part in concert with any of the foregoing, directly or 

indirectly.

20. “Product(s)” means a machine, manufacture, apparatus, device, instrument, mechanism, 

appliance, software, service, process, or an assemblage of components/parts (either 

individually or collectively) that are designed to function together electronically, 

mechanically, or otherwise, including any offered for sale or under development.

21. Any pronouns shall be construed to refer to the masculine, feminine, or neutral gender, in 

singular or plural, as in each case is most appropriate.

22. The singular form of any word shall be construed to also include the plural, and vice-versa.

23. The word “each” shall be construed to mean “each and every.”

24. The words “and” and “or” shall be construed conjunctively or disjunctively, whichever 

makes the request more inclusive.

25. The words “any” and “all” shall be construed to mean “any and all.”

INSTRUCTIONS

1. This request seeks disclosure to the full extent of the Federal Rules of Civil Procedure and 

shall be interpreted as inclusive rather than exclusive.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 48 of 90
6

2. It is Your duty in responding to this request to designate one or more officers, directors, 

managing agents, or other Persons who are the most knowledgeable with respect to the 

topics identified below.

DEPOSITION TOPICS

1. The alleged invention(s) claimed in each Asserted Claim, and the alleged benefits, 

advantages, disadvantages or limitations of those alleged invention(s) as compared to the state 

of the art at the time of filing, and the factual bases thereof.1

2. The inventorship of each Asserted Claim, including identification of any 

individuals other than the Named Inventors who aided or participated in the conception, 

reduction to practice, or diligence toward reduction to practice of the subject matter of the 

Asserted Claims.2

3. The role of each Named Inventor, as well as any individual identified pursuant 

to Topic No. 2, in the alleged invention of each Asserted Claim, including conception, diligence 

and reduction to practice, and including the subject matter to which each Person contributed, 

and the dates and circumstances in which each Named Inventor, as well as any individual 

identified pursuant to Topic No. 2, made such contributions.3

 1 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, anticipation, patent-eligibility, written description, indefiniteness, and 

enablement). Such testimony will also be relevant to defenses relating to damages, including 

the availability of non-infringing alternatives. 2 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such testimony will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 3 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 49 of 90
7

4. The conception, reduction to practice, and diligence toward the reduction to 

practice of each Asserted Claim, and any corroboration thereof.4

5. The dates and circumstances concerning any first disclosure, demonstration, sale 

or offer for sale of any prototype or commercial embodiment of any of the inventions claimed 

in the Asserted Claims, and the identification and subject matter of any documents relating to 

or referring to each such activity.5

6. The past and current ownership of the Asserted Patent, including its chain of 

title.6

7. The preparation and prosecution of the applications relating to the Asserted 

Patent, any Related Patents, Related Applications, and patents and applications incorporated by 

reference into the Asserted Patent, and any certificates of correction.7

 

indefiniteness, and enablement). Such testimony will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 4 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such testimony will also be relevant to defenses, such as 

improper inventorship, derivation, and inequitable conduct. 5 Such testimony will be relevant to defenses, such as invalidity (including obviousness, 

secondary considerations regarding obviousness, and anticipation) and inequitable conduct. 6 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 7 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such 

testimony will also be relevant to defenses relating to damages, including the availability of 

non-infringing alternatives.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 50 of 90
8

8. The state of the art at the time of filing for the Asserted Patent, and Your 

knowledge thereof.8

9. Any facts, studies, investigations, information, documents (including Prior Art), 

and analyses You identified, received, or knew at any time relating to the alleged validity, 

enforceability, infringement, valuation, or priority dates of the Asserted Patent, Related Patents, 

Related Applications, or patents and applications incorporated by reference into the Asserted 

Patent, including any Communications with third parties relating to the foregoing.9

10. Any facts, studies, investigations, information, documents, and analyses 

regarding the structure, functions, development of, or operation of, or that constitute 

embodiments of, any alleged invention disclosed or claimed in the Asserted Patent, regardless 

of whether such embodiment was commercialized, and regardless of whether or not it worked 

properly.10

11. Any attempts to sell or otherwise transfer financial interests in the Asserted 

Patent, any portfolio of patents containing the Asserted Patent, or any patents related to the 

 8 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such 

testimony will also be relevant to defenses relating to damages, including the availability of 

non-infringing alternatives. 9 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such 

testimony will also be relevant to defenses relating to damages, including the availability of 

non-infringing alternatives. 10 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such testimony will also be relevant to defenses relating to 

damages, including the availability of non-infringing alternatives and failure to mark. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 51 of 90
9

subject matter of the Asserted Claims.11

12. The timing and circumstances related to Your first knowledge or awareness of 

any alleged infringement of the Asserted Patent by each of the Defendants.12

13. Any decision to pursue or not to pursue a claim infringement of any of the claims 

of the Asserted Patent against any Defendant.13

14. Any efforts by You, any predecessor-in-interest of the Asserted Patent, or 

any other Person to enforce or license the Asserted Patent, or any portfolio of patents 

containing the Asserted Patent, or any patents related to the subject matter of the Asserted 

Claims.14

15. Your policies and practices concerning patent agreements (including licensing), 

including:15

 11 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 12 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement. 13 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement. 14 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 15 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the “licensor’s established policy and 

marketing program to maintain his patent monopoly by not licensing others to use the 

invention or by granting licenses under special conditions designed to preserve that 

monopoly”, among others things. Georgia-Pacific, 318 F. Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 52 of 90
10

a. any written licensing policies or best practices;

b. any most favored Licensee;

c. the economic and technical factors considered by You in drafting and 

entering into any license, royalties, standstill or settlement agreements;

d. any standard or preferred terms for license, royalty, standstill or settlement 

agreements;

e. the process by which You determine the nature, scope and terms of license 

agreements in which You are a licensor; and

f. any circumstance in which You deviated from such policies.

16. Your knowledge of, and participation in, any Communications between 

Plaintiff and Defendants prior to the filing of the Action.16

17. Any Communications related to Plaintiff, including communications related to 

licensing of any patents related the subject matter of the Asserted Claims, including the Asserted 

Patent, Related Patents, and Related Applications, compensation, license rates, royalties related 

thereto, agreements with Plaintiff, Defendants, the Action, the decision to file the Action, 

 16 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as prosecution history estoppel, non-infringement, invalidity (including 

obviousness, secondary considerations regarding obviousness, anticipation, patent-eligibility, 

written description, indefiniteness, and enablement), and inequitable conduct. Such 

testimony will be relevant to quantifying any alleged damages. Such testimony will also be 

relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). Such testimony will be relevant to license 

exhaustion defenses, as well as, to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 53 of 90
11

requests or offers to provide assistance, witnesses and/or documents for use in the Lawsuit, and 

any discussion about standing of Plaintiff to bring the Action.17

18. Your relationship with all potential Licensees, including all agreements, 

assurances, covenants not to sue, and understandings not to assert patents against such potential 

Licensees, including but not limited to Communications and agreements relating to the Asserted 

Patent, Related Patents or Related Applications, and the circumstances relating to such 

activity.18

19. Your relationship with any entity associated with Stuart A. Shanus, Marc Wade, 

and/or Craig Etchegoyen, including without limitation Wade and Company, Orange Holdings, 

WSOU, and/or Uniloc USA, Inc.,19 including any patent license agreements with any such 

entity that relate to patents or patent applications that claim subject matter related to the subject 

 17 Such testimony will be relevant to quantifying any alleged damages. Such testimony will 

also be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). Such testimony will be relevant to license 

exhaustion defenses, as well as, to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 18 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 19 Stuart A. Shanus and Craig Etchegoyen are the Chairman and President of WSOU. Mark 

Wade, Wade and Company, Orange Holdings, and/or Uniloc USA, Inc. are all related 

persons or entities of WSOU. 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 54 of 90
12

matter of the Asserted Claims.20

20. Any Communication You engaged in regarding each Defendant and its 

respective products or services, and any analysis You performed of each Defendant and its 

respective products and services related to the Asserted Patent, Related Patents or Related 

Applications.21

21. Any valuations of the Asserted Patent or any portfolio of patents that includes 

the Asserted Patent.22

22. Any licenses, assignments, conveyances, security interests, or other agreements 

relating to the Asserted Patent, or any portfolio of patents that includes or included the Asserted 

Patent, and negotiations leading to and circumstances surrounding such agreement.23

 20 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such testimony will also be relevant to license exhaustion 

defenses, as well as, to quantifying any alleged damages pursuant the Georgia-Pacific

factors, which require consideration of the: “royalties received by the patentee”; “rates paid 

by the licensee for the use of other patents comparable to the patent in suit”; “established 

profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 21 Such testimony will be relevant to quantifying any alleged damages. Such testimony will 

also be relevant to defenses, such as non-infringement and invalidity (including obviousness, 

secondary considerations regarding obviousness, anticipation, patent-eligibility, written 

description, indefiniteness, and enablement). 22 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 23 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 55 of 90
13

23. Any revenues and profits received by You for any products practicing the 

alleged invention of the Asserted Patent.24

24. Revenues, costs, expenses, and profits (including gross and net profits) 

generated in connection with Your ownership of, the Asserted Patent, and the methodology used 

to calculate or otherwise determine revenues, costs, expenses, and/or profits.25

25. Any licensing fees and rates paid to You for each portfolio that includes the 

Asserted Patent.26

26. The rates paid by any Licensee to You for the use of other patents comparable 

to the Asserted Patent.27

 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 24 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 25 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 26 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 27 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 56 of 90
14

27. Any financial interests that You may have in the Asserted Patent, including but 

not limited to royalties and the outcome of the Action.28

28. Any facts, studies, investigations, and analyses relating to any submission of 

intellectual property right declarations with respect to the Asserted Patent to any standard 

maintained by an international and/or domestic trade association or standards setting organization, 

including all analyses or opinions related thereto.29

29. Any facts, studies, investigations, and analyses relating to any alleged essentiality 

of the Asserted Patent to any industry standard, including any Communications with third parties 

relating to the foregoing.30

30. Any investigation of the standards activity and intellectual property right 

disclosures of any predecessor-in-interest to the Asserted Patent, including any investigation by 

You into the intellectual property right policies, Fair Reasonable and Non-Discriminatory 

 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 28 Such testimony will be relevant to license exhaustion defenses, as well as, to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 29 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). 30 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 57 of 90
15

(“FRAND”) obligations, or Reasonable and Non-Discriminatory (“RAND”) terms relating to 

patent licensing in the technical space related to the subject matter of the Asserted Claims.31

31. The role of You and/or any prior owner of the Asserted Patent, or any affiliates of 

You, or a prior owner of the Asserted Patent, in any standards setting organization from December 

28, 2001 to present.32

32. Any Communications that You, any predecessor-in-interest of the Asserted 

Patent, and/or any Named Inventors had with an international and/or domestic trade association or 

standards setting organizations regarding the subject matter of the Asserted Claims.33

33. Any disclosures made by or on behalf of You or any predecessor-in-interest of the 

 31 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 32 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 33 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 58 of 90
16

Asserted Patent to an international and/or domestic trade association or standards setting 

organization regarding the existence and/or potential standard essentiality of the Asserted Patent, 

Related Patents, or Related Applications.34

34. Your knowledge of, and compliance with, intellectual property right policies of 

an international and/or domestic trade association or standards setting organization related to the 

subject matter of the Asserted Claims.35

35. Your knowledge of, and compliance with, FRAND and/or RAND obligations, 

including without limitation any policies, guidelines, or instructions, and any related analysis or 

discussions.36

 34 Such testimony will be relevant to determining the scope of the patents in claim construction 

and to defenses, such as non-infringement, and invalidity (including obviousness, secondary 

considerations regarding obviousness, anticipation, patent-eligibility, written description, 

indefiniteness, and enablement). Such testimony will also be relevant to quantifying any 

alleged damages pursuant the Georgia-Pacific factors, which require consideration of the: 

“royalties received by the patentee”; “rates paid by the licensee for the use of other patents 

comparable to the patent in suit”; “established profitability of the product made under the 

patent”; “character of the commercial embodiment of it as owned and produced by the 

licensor”; “portion of the profit or of the selling price that may be customary in the particular 

business or in comparable businesses to allow for the use of the invention or analogous 

inventions”; and “portion of the realizable profit that should be credited to the invention”; 

among others things. Georgia-Pacific, 318 F. Supp. at 1119–20. 35 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20. 36 Such testimony will be relevant to quantifying any alleged damages pursuant the GeorgiaPacific factors, which require consideration of the: “royalties received by the patentee”; 

“rates paid by the licensee for the use of other patents comparable to the patent in suit”; 

“established profitability of the product made under the patent”; “character of the commercial 

embodiment of it as owned and produced by the licensor”; “portion of the profit or of the 

selling price that may be customary in the particular business or in comparable businesses to 

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 59 of 90
17

36. Your collection, retention and production of documents and information relevant 

to the Action, including but not limited to:

a. Your production of documents and information to Defendants, either 

directly or indirectly through Plaintiff;

b. Your efforts to identify, locate and gather documents for production, 

including identification of custodians;

c. the storage types and physical location of relevant data;

d. a description of all sources containing the information which has been 

produced by You, including custodians thereof; and

e. all databases and email systems containing information or documents 

relevant to the Action and produced, referenced, created or used through the 

present, and operation of such systems or databases, including ability to 

search, storage, retrieving, backup, archiving, cataloguing, and the identity 

of Persons responsible for administering those databases and/or email 

systems.

37. The subject matter and content of all Documents and Communications

identified and/or produced in response to the above requests.

38. The authenticity of all Documents identified in response to the requests for 

production.

39. All Documents reviewed by You in connection with the deposition on these topics.

40. For each of the topics set forth in this request, the identity and location of Your 

 

allow for the use of the invention or analogous inventions”; and “portion of the realizable 

profit that should be credited to the invention”; among others things. Georgia-Pacific, 318 F. 

Supp. at 1119–20.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 60 of 90
18

employee, agent, representative, independent contractor, or other partner, affiliate, or business 

associate, with the most knowledge concerning that topic.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 61 of 90
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EXHIBIT D3

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 62 of 90
1

IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

DELL TECHNOLOGIES INC., DELL 

INC., EMC CORPORATION, AND 

VMWARE, INC.

Defendants.

§

§

§

§

§

§

§

§

§

§

§

§

NO. 6:20-cv-486-ADA

JURY TRIAL DEMANDED

FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff WSOU Investments, LLC d/b/a Brazos Licensing and Development (“Brazos” or 

“Plaintiff”), by and through its attorneys, files this First Amended Complaint (“Amended 

Complaint” or “Complaint”) for Patent Infringement against Dell Technologies Inc., Dell Inc., 

EMC Corporation, and VMWare, Inc. (collectively, “Defendants”) and alleges:

NATURE OF THE ACTION

1. This is a civil action for patent infringement arising under the Patent Laws of the 

United States, 35 U.S.C. §§ 1, et seq., including §§ 271, 281, 284, and 285.

THE PARTIES

2. Brazos is a limited liability corporation organized and existing under the laws of 

Delaware, with its principal place of business at 605 Austin Avenue, Suite 6, Waco, Texas 76701.

3. On information and belief, defendant Dell Technologies Inc. (“Dell”) is a Delaware 

corporation with a principal place of business at One Dell Way, Round Rock, Texas 78682.

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2

4. On information and belief, defendant Dell Inc. is a Delaware corporation with a 

principal place of business at One Dell Way, Round Rock, Texas 78682. Dell Inc. is wholly owned 

by its corporate parent, Dell.

5. On information and belief, defendant EMC Corporation (“EMC”) is a 

Massachusetts corporation with a principal place of business at One Dell Way, Round Rock, Texas 

78682. EMC Corporation is wholly owned by its corporate parent, Dell Technologies Inc.

6. Upon information and belief, VMware, Inc. (“VMWare”) is a Delaware corporation 

with two established places of business in this District, including two in Austin, Texas with over 

700 employees. 

7. Upon information and belief, VMWare was acquired by EMC in 2004 and 

conducted an initial public offering of Class A common stock in August 2007. On or around 

September 2016, Dell acquired by EMC. As a result, EMC became a wholly-owned subsidiary of 

Dell, and VMWare became an indirectly-held, majority-owned subsidiary of Dell. Under the rules 

of the New York Stock Exchange, VMWare is a controlled company. As of January 31, 2020, Dell 

controlled approximately 80.9% of VMWare’s outstanding common stock, including 31 million 

shares of its Class A common stock and all of it Class B common stock.

JURISDICTION AND VENUE

8. This is an action for patent infringement which arises under the Patent Laws of the 

United States, in particular, 35 U.S.C. §§ 271, 281, 284, and 285.

9. This Court has jurisdiction over the subject matter of this action under 28 U.S.C.

§§ 1331 and 1338(a).

10. This Court has specific and general personal jurisdiction over each defendant

pursuant to due process and/or the Texas Long Arm Statute, because each defendant has committed 

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3

acts giving rise to this action within Texas and within this judicial district. The Court’s exercise of 

jurisdiction over each defendant would not offend traditional notions of fair play and substantial 

justice because each defendant has established minimum contacts with the forum. For example, 

on information and belief, each defendant has committed acts of infringement in this judicial 

district, by among other things, selling and offering for sale products that infringe the asserted 

patent, directly or through intermediaries, as alleged herein.

11. Venue in the Western District of Texas is proper pursuant to 28 U.S.C. §§1391

and/or 1400(b). Each defendant has established places of business in the Western District of Texas. 

Each defendant is registered to do business in Texas. Upon information and belief, each defendant 

has transacted business in this District and has committed acts of infringement in this District. 

COUNT ONE - INFRINGEMENT OF 

U.S. PATENT NO. 7,092,360

12. Brazos re-alleges and incorporates by reference the preceding paragraphs of this 

Complaint.

13. On August 15, 2006, the United States Patent and Trademark Office duly and 

legally issued U.S. Patent No. 7,092,360 (“the ‘360 Patent”), entitled “Monitor, System and 

Method for Monitoring Performance of a Scheduler.” A true and correct copy of the ‘360 Patent

is attached as Exhibit A to this Complaint.

14. Brazos is the owner of all rights, title, and interest in and to the ‘360 Patent, 

including the right to assert all causes of action arising under the ‘360 Patent and the right to any 

remedies for the infringement of the ‘360 Patent.

15. Defendants make, use, sell, offer for sale, import, and/or distribute in the United 

States, including within this judicial district, products such as, but not limited to, cloud-related

solutions, including but not limited to, devices incorporating VMware’s VeloCloud solutions and 

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4

vSphere software, such as Dell’s PowerEdge servers and VxRail appliances (collectively, the 

“Accused Products”).

https://www.dell.com/learn/us/en/15/solutions/vmware-vcloud

https://www.dell.com/downloads/global/power/ps3q07-20070562-hanson.pdf

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https://www.delltechnologies.com/en-us/solutions/vmware/servers-for-vmware.htm

https://www.dell.com/downloads/global/vectors/dell_and_vmware_drs_ha_solutions.pdf

https://www.dellemc.com/resources/en-us/asset/technical-guides-supportinformation/products/converged-infrastructure/vxrail-vcenter-server-planning-guide.pdf

16. The Accused Products provide functions for resource management, designated as 

Network I/O Control (NetIOC), including scheduling.

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https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

...

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/products/vsphere/vmwar

e-vsphere-feature-comparison-datasheet.pdf

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/performance/

vsphere-esxi-vcenter-server-67-performance-best-practices.pdf

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

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17. In NetIOC, each resource-pool flow can have a dedicated software queue inside the 

scheduler.

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/vmware_netio

c_bestpractices-white-paper.pdf

18. VMware Vsphere’s NetIOC scheduler includes certain scheduling functionality including, 

for example, the hClock Scheduler. The NetIOC scheduler in the Accused Products maintains and 

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keeps track of each network port and decides which network port to pick for scheduling the 

dispatch of data traffic. 

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

19. Various tags are in use in the hClock scheduler to help in monitoring the status of 

different states of an element in hClock Scheduler. For example, Reservation tags (Rq), Limit tags 

(Lq) and Shares tags (Sq) are used to track the allocation based on reservation values (rq), limit 

values (lq), and shares values (sq) respectively, and these elements track different metrics 

associated with a transmit queue. These tags are in a real-time domain to track the fulfillment of 

reservations and limits by comparing the corresponding tags with the real-time values. Comparison 

is made regarding the previous values and the real-time value, which helps in determining the 

output.

...

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9

https://dl.acm.org/doi/abs/10.1145/2465351.2465382

20. The hClock scheduler checks the status of each queue. There are pointers associated 

at the end of each queue to track the status. The next step is based on the output of the status of the 

queue.

https://dl.acm.org/doi/abs/10.1145/2465351.2465382

21. The Accused Products are programmed to handle transmit queues. 

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/vmware_netio

c_bestpractices-white-paper.pdf

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10

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/vmware_netio

c_bestpractices-white-paper.pdf

22. The Accused Products provide the impact of NetIOC Scheduler on a vSphere host

and have a separate scheduler queue for each virtual port. The NetIOC scheduler picks up 

packets from the network port queues. It dispatches them for transmitting over the network 

adapter while making sure that bandwidth, shares, and limit settings are provided to each 

network port in NetIOC. 

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

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11

23. As noted above, the NetIOC scheduler decides which network port to pick for 

scheduling at a given amount of time among the plurality of ports and queues. It can use one 

transmit queue of a port from the available ports.

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-ioc-vsphere6-

performance-evaluation-white-paper.pdf

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

24. The Accused Products may also use HClock Multiqueue to distribute traffic 

across multiple transmit queues on a single physical NIC.

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/performance/

Perf_Best_Practices_vSphere65.pdf

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12

25. The hClock scheduler in the Accused Products has an algorithm based on whether 

a transmit queue is empty or occupied.

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

26. Various decisions for a scheduler in the Accused Products are based on the 

number of packets in a queue, which is calculated based on “packet length.”

https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/network-iocvsphere6-performance-evaluation-white-paper.pdf

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 74 of 90 Case 6:20-cv-00486-ADA Document 35 Filed 10/19/20 Page 12 of 17
13

27. In view of preceding paragraphs, each and every element of at least claim 26 of the 

‘360 Patent is found in the Accused Products.

28. Upon information and belief, each and every element of at least claim 26 of the 

patent-in-suit is performed or practiced by Defendants at least through Defendants’ own use and 

configuration of its own Accused Products, and/or through Defendants’ own testing and 

configuration of its own Accused Products, and/or through Defendants’ providing services for its 

Accused Products, including but not limited to providing installation, deployment, support and 

configuration of its Accused Products.

29. Defendants continue to directly infringe at least one claim of the ‘360 Patent, 

literally or under the doctrine of equivalents, by making, using, selling, offering for sale, importing, 

and/or distributing the Accused Products in the United States, including within this judicial district, 

without the authority of Brazos.

30. Defendants had knowledge of their infringement of the patent-in-suit before the 

filing of this Amended Complaint.1 Defendants received notice and actual or constructive 

1 Dell filed a motion to dismiss that is mooted by this amended complaint. Dell’s motion cites a 

WDTX case (which relies authority from the District of Delaware) for the proposition that 

knowledge of a plaintiff’s patent after the lawsuit was filed is insufficient to plead the requisite 

knowledge for indirect infringement. See Aguirre v. Powerchute Sports, LLC, No. SA-10-CV0702 XR, 2011 WL 2471299, at *3 (W.D. Tex. June 17, 2011) (citing Xpoint Techs. v. Microsoft 

Corp., 730 F.Supp.2d 349 (D. Del. 2010)). Several Delaware courts have since rejected this rule 

because there is no statutory basis to support it and because there is no purpose served by the 

formality of requiring the plaintiff to file an amended complaint in order to be allowed to assert 

knowledge of the patents during the period following the filing of the original complaint. See 

Walker Digital, LLC v. Facebook, Inc., 852 F. Supp. 2d 559, 566 (D. Del. 2012) (“The court 

acknowledges that this result is inconsistent with its prior decisions in Xpoint Techs. v. Microsoft 

Corp., 730 F.Supp.2d 349 (D.Del.2010), and EON Corp. IP Holdings LLC v. FLO TV Inc., 802 

F.Supp.2d 527 (D. Del. 2011). Given the ease of amendment, the limitation of damages to postknowledge conduct, and in the interests of judicial economy, the court finds that the better 

reasoning is to allow a complaint that satisfies Rule 8 to proceed to discovery rather than 

dismissing it for lack of pre-filing knowledge when, by the time the motion to dismiss has been 

filed, defendant in fact has the requisite knowledge as pled by plaintiff.”); see also IOENGINE, 

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14

knowledge of their infringement of the patent-in-suit since at least the date of service of the original 

Complaint. 

31. Since before the filing of this Amended Complaint, through its actions, Defendants

have actively induced product makers, distributors, retailers, and/or end users of the Accused 

Products to infringe the ‘360 Patent throughout the United States, including within this judicial 

district, by, among other things, advertising and promoting the use of the Accused Products in 

various websites, including providing and disseminating product descriptions, operating manuals, 

and other instructions on how to implement and configure the Accused Products. Examples of 

such advertising, promoting, and/or instructing include the documents at:

• https://www.dell.com/learn/us/en/15/solutions/vmware-vcloud

• https://www.dell.com/downloads/global/power/ps3q07-20070562-hanson.pdf

• https://www.delltechnologies.com/en-us/solutions/vmware/servers-for-vmware.htm

• https://www.dell.com/downloads/global/vectors/dell_and_vmware_drs_ha_solutions.pd

f

• https://www.dellemc.com/resources/en-us/asset/technical-guides-supportinformation/products/converged-infrastructure/vxrail-vcenter-server-planning-guide.pdf

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/netw

ork-ioc-vsphere6-performance-evaluation-white-paper.pdf

• http://fileapi.it.hactcm.edu.cn/yjsyxnh/file/2019/3/1/131959260611073796.pdf

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/perfo

rmance/Perf_Best_Practices_vSphere65.pdf

LLC v. PayPal Holdings, Inc., CV 18-452-WCB, 2019 WL 330515, at *4 (D. Del. Jan. 25, 2019) 

(“The Court sees no purpose that would be served by the formality of requiring IOENGINE to file 

an amended complaint in order to be allowed to assert knowledge of the patents during the period

following the filing of the original complaint.”).

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15

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/vmw

are_netioc_bestpractices-white-paper.pdf

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/products/vspher

e/vmware-vsphere-feature-comparison-datasheet.pdf

• https://www.vmware.com/content/dam/digitalmarketing/vmware/en/pdf/techpaper/perfo

rmance/vsphere-esxi-vcenter-server-67-performance-best-practices.pdf

32. Since before the filing of this Amended Complaint, through its actions, Defendants

have contributed to the infringement of the ‘360 Patent by having others sell, offer for sale, or use 

the Accused Products throughout the United States, including within this judicial district, with

knowledge that the Accused Products infringe the ‘360 Patent. The Accused Products are 

especially made or adapted for infringing the ‘360 Patent and have no substantial non-infringing 

use. For example, in view of the preceding paragraphs, the Accused Products contain functionality 

which is material to at least one claim of the ‘360 Patent.

JURY DEMAND

Brazos hereby demands a jury on all issues so triable.

REQUEST FOR RELIEF

WHEREFORE, Brazos respectfully requests that the Court:

(A) Enter judgment that Defendants infringe one or more claims of the ‘360 Patent

literally and/or under the doctrine of equivalents;

(B) Enter judgment that Defendants have induced infringement and continue to induce 

infringement of one or more claims of the ‘360 Patent;

(C) Enter judgment that Defendants have contributed to and continue to contribute to 

the infringement of one or more claims of the ‘360 Patent;

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(D) Award Brazos damages, to be paid by Defendants in an amount adequate to 

compensate Brazos for such damages, together with pre-judgment and post-judgment interest for 

the infringement by Defendants of the ‘360 Patent through the date such judgment is entered in 

accordance with 35 U.S.C. § 284, and increase such award by up to three times the amount found 

or assessed in accordance with 35 U.S.C. § 284;

(E) Declare this case exceptional pursuant to 35 U.S.C. § 285; and

(F) Award Brazos its costs, disbursements, attorneys’ fees, and such further and 

additional relief as is deemed appropriate by this Court.

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17

Dated: October 19, 2020 Respectfully submitted,

/s/ James L. Etheridge

James L. Etheridge

Texas State Bar No. 24059147 

Ryan S. Loveless

Texas State Bar No. 24036997 

Travis L. Richins

Texas State Bar No. 24061296

ETHERIDGE LAW GROUP, PLLC

2600 E. Southlake Blvd., Suite 120 / 324

Southlake, Texas 76092

Telephone: (817) 470-7249

Facsimile: (817) 887-5950

Jim@EtheridgeLaw.com

Ryan@EtheridgeLaw.com

Travis@EtheridgeLaw.com

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com 

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

COUNSEL FOR PLAINTIFF

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 79 of 90 Case 6:20-cv-00486-ADA Document 35 Filed 10/19/20 Page 17 of 17
EXHIBIT D4

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 80 of 90
UNITED STATES DISTRICT COURT

Western District of Texas

WACO DIVISION

WSOU INVESTMENTS LLC

vs.

DELL TECHNOLOGIES INC., DELL INC.,

EMC CORPORATION, VMWARE, INC.

§

§

§

§

§

NO: WA:20-CV-00486-ADA

ORDER GOVERNING PROCEEDINGS – PATENT CASE

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

This case is SET for a telephonic Rule 16 Case Management Conference on

Wednesday, October 21, 2020 at 1:30 p.m. Participants shall dial into the following

number 5 minutes before the scheduled time: 866.434.5269; access code 967-8090.

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 claims(s) are found. Plaintiff shall also identify the priority date (i.c.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 81 of 90 Case 6:20-cv-00486-ADA Document 33 Filed 10/05/20 Page 1 of 10
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 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 for Motions to Transfer:

 a. Opening – 15 pages

 b. Response – 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 preceding the filing of the Complaint,1 unless the parties agree to

 some other timeframe.

DISCOVERY 

Except with regard to venue, jurisdictional, and claim construction-related discovery, 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.

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

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With respect to venue and jurisdictional discovery, the Court generally grants leave for the parties to

conduct targeted discovery (including, but not limited to requests for production, interrogatories, and

depositions) with regard to motions to transfer venue or motions to dismiss based on lack of

jurisdiction. If the parties disagree as to what reasonable discovery limits are, the Court encourages

the parties to contact the Court to request a telephonic discovery hearing.

Following the Markman hearing, the following discovery limits will apply to this case. The Court

will consider reasonable requests to adjust 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

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

related defendants sued together) 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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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).

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. Based on the Court’s experience, the Court believes that it should

have presumed limits on the number of claim terms to be construed. The “presumed limit” is

the maximum number of terms that the parties may request the Court to construe without

further leave of Court. If the Court grants leave for the additional terms to be construed,

depending on the complexity and number of terms, the Court may split the Markman hearing

into two hearings.

The presumed limits based on the number of patents-in-suit are as follows:

Limits for Number of Claim Terms to be Construed

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

10 terms 12 terms 15 terms

When the parties submit their joint claim construction statement, in addition to the term and

the parties’ proposed constructions, the parties should indicate which party or side proposed

that term, or if that was a joint proposal.

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 simultaneous filings will take place at 5:00 p.m. CT.

Case 6:20-cv-00486-ADA Document 45-1 Filed 11/06/20 Page 84 of 90 Case 6:20-cv-00486-ADA Document 33 Filed 10/05/20 Page 4 of 10
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

Conduct of the Markman Hearing.

The Court generally sets 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 requires submission of technology tutorials in advance of the Markman

hearing when they may be of benefit. The parties may submit tutorials in electronic form not

later than one week before the Markman hearing and the Court encourages the parties to aim

for tutorials with voiceovers in the 15 minute range. If a party intends to present a live tutorial,

the parties should contact the Court to set-up a Zoom or telephonic tutorial to occur at least a

week before the Markman hearing. In general, tutorials should be: (1) directed to the

underlying technology (rather than argument related to infringement or validity), and (2)

limited to 15 minutes per side. 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.

GENERALISSUES

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.

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2. There may be instances where the submission of substantive briefs via audio file will be of

 help to the Court. If a party is contemplating submitting a brief via audio file it should 

 contact the Court for guidance on whether it would be helpful to the Court. However, the

Court has determined that audio recordings of Markman briefs are of limited value and those

 need not be submitted. 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. Audio files shall be

 submitted via USB drive, Box (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 

 discoveryand encourages the parties to contact the Court’s law clerk (with opposing counsel)

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

4. The Court is generally willing to extend the response to the Complaint up to 45 days ifagreed

 by the parties. However, longer extensions are disfavored and will require goodcause.

5. For Markman briefs, summary judgment motions, and Daubert motions, each party 

 shalldeliver to Chambers one (1) paper copy of its Opening, Response, and Reply Briefs,

 omittingattachments, no later than one week after the last-filed brief or at least a week before

 the hearing, whichever is earlier.

6. Plaintiff must file a notice informing the Court when an IPR is filed, the expected time for an

 institution decision, and the expected time for a final written decision, within two weeks of

 the filing of the IPR.

7. To the extent the parties need to email the Court, the parties should use the following

 emailaddress: TXWDml_LawClerks_JudgeAlbright@txwd.uscourts.gov.

ORDERED this 5th day of October, 2020.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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APPENDIX 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 two years

preceding the filing of the Complaint, 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.

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 therefor. A

4 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.

7

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OGP Version 3.0

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, Box (not another cloud storage),5 or email to the law

clerk, pdf versions of all as-filed briefing and exhibits. Each

party shall deliver to Chambers paper copies of its Opening,

Response , and Reply Markman Briefs, omitting attachments.

Absent agreement of the parties, the Plaintiff shall be

responsible for the timely submission of this and other Joint

filings.

23 weeks after CMC (but

at least 1 week before

Markman hearing)

Parties submit optional technical tutorials. The parties shall

also jointly submit, via USB drive, Box (not another cloud

storage), or email to the law clerk, pdf versions of all as-filed

briefing and exhibits.

24 weeks after CMC (or as

soon as practicable)

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

1 business day 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

5 To the extent a party wishes to use cloud storage, the parties should contact the law clerk to request a Box link

so that the party can directly upload the file to the Court’s Box account.

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seasonably amend if new information is identified after initial

contentions.

12 weeks after Markman

hearing

Deadline to amend pleadings. A motion is not required unless

the amendment adds patents or patent claims.

26 weeks after Markman 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.

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 for the second of two meet and confer to discuss

narrowing the number of claims asserted and prior art

references at issue to triable limits. To the extent 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.

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.

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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

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@yahoo.com

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.

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)6

Jury Selection/Trial. The Court expects to set these dates at

the conclusion of the Markman Hearing.

6 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.

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